The Essential Functions of a Trademark

November 28, 2020

By: tme

Ai Law Legal Services

What is a trade mark?

The terms “trade mark” and “brand” are often used interchangeably. Both refer to a recognisable sign that denotes origin and quality. A trademark can be infringed if it is used by another without the consent from the owner. From this perspective, a trademark gives its owner a monopoly over that particular thing for which the mark exists.  A trade mark can be registered or unregistered. A registered trademark benefits from protection against third party infringers compared to unregistered trade marks which, whilst still enforceable, can prove more of a challenge on an evidential basis to enforce such a mark against an infringer.

What are the functions of a trade mark?

trade mark’s essential function is to be a badge of origin. It distinguishes the goods and services of one undertaking from those of other undertakings. This is its primary function from which all of its other functions follow. It cannot be put better than as it was put in the Memorandum on the creation of an EEC trade mark (Bulletin of the European Communities, Supplement 8/76, adopted by the Commission on 6 July 1976):

”Both economically and legally the function of the trade mark as an indication of origin is paramount. It follows directly from the concept of a trade mark as a distinctive sign, that it serves to distinguish trade marked products originating from a particular firm or group of firms from the products of other firms. From this basic function of the trade mark are derived all the other functions which the trade mark fulfils in economic life. If the trade mark guarantees that the commercial origin is the same, the consumer can count on a similarity of composition and quality of goods bearing the trade mark; and the advertising value of the trade mark requires that between the trade marked goods and the owner of the trade mark there is a definite legal relationship. Although the quality function predominates in the mind of the consumer and the publicity function predominates in the mind of the producer, so far as the legal aspect is concerned the decisive criterion is the function of the mark as an indication of origin. Only if the proper purpose of the trade mark is maintained, namely to distinguish the trade marked goods from goods of different origin, can it fulfil its further role as an instrument of sales promotion and consumer information; and only then does the trade mark right perform its function of protecting the proprietor against injury to the reputation of his trade mark.”

Morcom, Roughton and St Quintin: The Modern Law of Trade Marks > Part I General introduction > Chapter 1 Subject matter and history of the law

Functions of a Trade mark:

  1. The origin function – To denote origin;
  2. The quality function – To denote quality;
  3. The advertising function – To denote connection between the trademark owner and the advertiser.

If the trade mark exists for its proper purpose, i.e. to denote origin, only then will the trademark fulfil its further functions and perform to be an instrument of advertising, investment and protection for the proprietor against injury by infringers.

The proper performance of the trademark is arguably becoming more important in our internet age and owners will need to use resources to police their markets online as infringements become more prevalent and the amount of platforms on which infringement is possible are increasing. The internet and social media in particular are resulting in trademarks being used in new ways. See our insight on the use and protection of trademarks online for more information. 

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