With time, as humans, we grow affection for certain words, marks, signs, or symbols and desire exclusive use or connection with them. And as we pursue our entrepreneurial dreams, we oftentimes desire that our much-loved words, marks, signs, etc. represent our ideas, define our services and products, and become our unique identifier.
To an extent, what underlines the desire for the exclusive use of such words, marks, signs, or symbols is what they evoke in us and the relationships we have built with them. Such is the word “LOVE”. Naturally, the word “love” regardless of its use awakens our sense of belonging, attachment, likeness, intimate disposition, and appreciation among other synonyms.
Nonetheless, despite what the word “love” connects one to or ignites in you, one cannot lay exclusive claim to its use or assert any intellectual property right over same. And what accounts for this is the established globally recognized criteria by which one can assert such exclusive rights and use of words, marks, signs, etc. one may consider unique to his or her entrepreneurial pursuit.
In this article, we seek to discuss the qualifying criteria which enable words, marks, signs, symbols, logos, etc. to attain intellectual property right in the form of trademarks for their distinctive use by companies and individuals to build and drive their brands – products and services.
Intellectual property assets and trademarks
Intellectual Property (IP) assets are the intangible creations of the human intellect that are protected under law, such as brand names, designs, trade secrets, and artistic works among others. These assets are regarded as part of the valuable assets owned by individuals and businesses – becoming the vehicles through which revenues are generated, as well as the facilitation of growth, and expansions. Generally, copyrights, patents, trade secrets, and trademarks are often the common intellectual assets connected with the creation and development of intellectual property rights.
However, there is no blanket conferment of intellectual property rights on all intellectual creations. Typically, common recognizable standards have developed across the world as the test of whether a creation deserves conferment of an intellectual property right to the exclusion of others. Some known criteria include novelty of the creation, creativity, industrial usefulness, and distinctiveness – and these apply equally in Ghana as well.
Trademarks conventionally operate as a brand label on products and services, offering the maker of such products and services a point of distinction from other products and services. Due to the competitive nature of the entrepreneurial space, the law affords protection to these intentionally carved-out brands – words, signs, logos, marks, etc. to protect accrued goodwill, enhance, and sustain business operations while preventing market exploitation by fictitious traders and organizations who may seek to pass off existing established and registered brands identities to drive “false” or “fake” brand associations.
Generally, a trademark is a distinctive sign or combination of signs used by an individual or organization to distinguish their goods or services from those of other traders. These can include words, names, logos, symbols, slogans, and even sounds. It allows consumers to easily identify and differentiate products or services and also enables businesses to build recognition and foster customer loyalty.
Trademarks are primarily used to avoid consumer confusion over the origin or source of products and services. This is accomplished by giving the owner of the trademark the sole right to use the granted/approved trademark in promoting associated products or services, subject to the owner’s right to license or assign their interest to others.
Qualification criteria for trademarks
The law explicitly recognizes the protection of words, personal names, designs, letters, colors, numerals, shapes, holograms, sounds, or a combination of any of these elements, or slogans where they are not long enough to be protected by copyright, which can be distinguished in its identification and use.
There exists to an extent, some confusion on how ‘trademarkable’ words can be, however, a key point to note is that words, names, or letters that are merely descriptive of the goods or services they are connected to do not always qualify for trademark registration. Rather, these words or phrases must be distinctive and indicate the origin of the said product or service.
Further, the law provides certain evaluative benchmarks which must be satisfied before permitting the registration of a mark, sign, word, etc. as a trademark. Overall, trademarks in Ghana are evaluated and assessed to ensure that they meet the legal requirements for protection in accordance with a global protective regime while promoting fair competition and preventing consumer confusion.
Discussed below are the benchmarks or qualification criteria provided by the law: –
- Distinctiveness – To qualify for trademark protection, the identified name or logo or mark, or sign must be distinctive or capable of being distinguished from and not similar to any other registered or pending trademark. Notably, just as there is a “necessity of innovation” for patents and “originality” for copyright, distinctiveness is a fundamental and paramount condition for any trademark.
Since the purpose of a trademark is to encourage simple brand recognition and the avoidance of customer confusion, there cannot be a trademark without distinctiveness. If a trademark is to prevent purchasers from being confused about what they are purchasing, then the trademark somehow must be recognizable, identifiable, and different from other marks.
Examples include Apple, Coca-Cola, Samsung, Nokia, Adidas, etc. which are globally recognized brands. Individuals and businesses aiming to build a solid brand for their products and services must aim at creating or developing uniquely distinctive identifiers which could be trademarked.
- Prior Rights – Another major consideration made in the registration or otherwise of a trademark is the prior adoption and authorized usage of a mark, words, or symbol. That is to say that the trademark must not infringe on the prior rights – the existence of any earlier trademark rights – of any other person or entity that may conflict with the registration of a new trademark.
The law adopts and recognizes the “first-to-use” and “first-to-file” systems in determining where a proposed trademark could be registered. It is, therefore, necessary for individuals and businesses intending to trademark identified marks, words, or signs to conduct a search at the appropriate registry to ascertain the existence or otherwise of their chosen trademarks and where not registrable, undertake a re-development or re-design of their identifiers.
- Not Confusingly Similar – A proposed trademark must not be confusingly similar to any other registered or pending trademark, especially those in the same or similar class of goods or services, and even for goods and services which do not belong to the same class but for which the use of the trademark will suggest a connection between such goods and services.
The evaluation process will consider elements such as the visual, phonetic, and conceptual similarities between the marks, as well as the goods or services to which they are related. This assessment is typically based on the overall impression created by the trademarks. The ultimate goal is to always protect consumers from being misled or confused by similar trademarks and to also prevent the incidence of unfair competition and passing off on the market.
- Geographical Representation – For any mark or sign or word to qualify for trademark registration, it must not mislead consumers or cause confusion about the origin or quality of the goods or services associated with the mark. In most cases, the use of a geographic name as a brand name informs consumers of the product’s origins as well as any unique qualities that the product possesses as a result of those origins.
- Lawful Use – This means that a trademark application may be rejected if it is suggested that a trademark be used in connection with goods or services that are illegal or prohibited. Similarly, in the interest of national security, another important regulatory check that is considered is in respect of the identical nature of the proposed trademark to any initials of a state-adopted name or sign or hallmark, armorial bearing, and flag, among others. This is very critical for any individual or business seeking to register a trademark in the country.
Upon the satisfaction of the above benchmarks, the Registrar will publish the trademark application in the Industrial Trademarks Bulletin for a period of two (2) months. It is important to point out that any person who has an interest in the trademark may file for a notice of opposition to the registration in a prescribed manner within this period, and in the instance of no opposition, a trademark certificate is issued. Any registered trademark has a protection span of ten (10) years from the date of filing the application for registration with a renewal option for a consecutive period of ten (10) years.
Consequently, any registered trademark shall have the benefit of exclusive use subject to the holder’s right to warrant such use by a third party, license or assign its interest as well as to institute an action for any infringement which may result from the unlawful use of the trademark by another. Regardless, the rights conferred on the owner of a trademark do not extend to such products and services which have been put on the market in another country with the owner’s prior consent.
Despite the numerous creative ways in which the word “love” or any other commonly used word can be used or mean to you, the legal framework surrounding trademarks places strict boundaries on what can and cannot be protected for one’s exclusive commercial use. While trademarks are valuable brand assets for businesses and individuals seeking to protect their brand, their use, adoption, etc., such identifiers are only registered as trademarks in strict compliance with legal benchmarks some of which have been discussed in this article.
Richard Nunekpeku is a Fintech Consultant and the Managing Partner of Sustineri Attorneys PRUC (www.sustineriattorneys.com) a client-centric law firm specializing in transactions, corporate legal services, dispute resolutions, and tax. He also heads the firm’s Start-ups, Fintech, and Innovations Practice divisions. He welcomes views on this article and is reachable at [email protected]
Cecilia Antwi Kyem is a Trainee Associate at Sustineri Attorneys PRUC. Cecilia specializes in Fintech and Innovations, Startups/SMEs, Corporate & Commercial Transactions, and Dispute Resolution. She welcomes views on this article via [email protected]