Background
What does Coca-Cola, Afia Schwarzenegger and Beyonce have in common? All these are brands with their names as assets. This means that, no one can use the names of the brands without the authorization of the owners. Using these brand names without the authorization of the owners will be considered a breach of their trademark rights.
What then is a trademark? it is basically a sign or a combination of signs that can be used to distinguish one brand from the other. It may include words such as “Everywhere You Go”, personal names such as “Afia Schwarzenegger or Beyonce”, designs such as logos, letters such as “MTN”, colours, numerals, shapes, holograms, sounds or a combination of any of these elements or slogans[i].
What is the essence of registering a trademark?
When a trademark is registered by a person, that trademark is protected from use by others who have not obtained authorization from the owner of the trademark[ii]. Considering this, where the trademark of a person is used by another without permission, the owner of the trademark can institute legal action against the perpetrator. The sanctions that may be imposed on the perpetrator include a fine or a term of imprisonment or both.
What is a trademark for?
A trademark serves two functions i.e.: (1) to identify a product; and (2) to distinguish the goods and/or services of a specific business from that of its competitors by enabling businesses differentiate themselves and their products and/or services.
First Come First Serve
It is important that businesses view their trademarks as assets and take steps to have them registered at the Trademarks Registry. This is because, trademark registrations generally operate on a first come first serve basis. Thus, where a person has registered his/her trademark or has submitted a trademark application, that person will have priority over another person who on a later date submits a trademark application in respect of the same mark or a similar mark. What this means is that, if Kwamina is the owner of XYZ mark and does not take steps to register it and Ayele registers or submits an application for registration of XYZ as her mark, Kwamina may be refused to register XYZ as it will be owned by Ayele or Ayele will have priority for submitting the trademark application first. There are however situations where the first come first serve basis may not apply because of nuances such as prior use and/or how popular the trademark is in the public domain.
First to Use
Even though the First Come First Serve basis is an important factor in trademark registration, an owner of a trademark may argue ‘First to Use’, which is where an owner who has first used the mark can establish that the mark was used by him/her prior to an application by an applicant who has filed for registration. Where the ‘First to use’ argument is upheld, the owner of the trademark will prevail and be granted the right to the trademark. For instance, Nana Afua has not registered but uses ABC mark for her plantain chips business which is very popular and known by all in Ghana, Edem applies for trademark protection of his mark which is ABC mark, the principle of first to use may come to play. Nana Afua may be granted the rights to use and own ABC mark since she used that mark first.
At the end of the day, registering your trademark gives you rights to use your trademark to the exclusion of others and also the right to regard it as an intangible asset for investment purposes.
By
Prince Addoquaye Acquaye, Managing Partner, Corporate and Allied Attorneys
&
Sandra Soto-Amoako
[i] Section 1 of the Trademarks Act (Amendment) Act, 2015
[ii] Article 16(1) of Agreement on Trade-Related Aspects of Intellectual Property Rights
