Tim Elliot: Okay. I just wanted to say, we have got a list of questions coming in. We’re live on Facebook. We’re like on TikTok. We’re live in Instagram while we’re recording this podcast. I thought we could answer a couple of these now. You kind of answered, if I trademark my product in the U.S., does that apply here as well? As long as you’ve applied locally. In a short while, I’m going to get you to run through, if you would, how you actually register your trademark, Ludmila, so we’ll look at the nuts and bolts. But I really like this question. Can you trademark a cake recipe? Somebody is asking.
Ludmila Yamalova: Interesting. Not the recipe so much because a trademark focuses more over the creative element and the visual element of intellectual property. That’s about the name, for example, of the recipe, how it is spelled out, how it is written out, the colors, and perhaps the logo that is attached to it. That’s what a trademark is meant for, not the ingredients that go into a recipe. A recipe, generally speaking, would be protected by a different type of intellectual property, and that is called copyright and/or also in the past there have been a recipes that have also been patented, and that is yet another form of intellectual property. At a high level, intellectual property in more traditional terms, consists of three different types, 1) trademark, (2) copyright, and (3) patent. A patent usually refers to a technological advancement, engineering solutions, although there have been a few recipes that have been actually patented, and that is so much the step-by-step recipe, but rather because there have been chemical components and chemical formulas that were relied on in the particular recipe. If there is that kind of a scientific element involved, then yes, you can patent it. A recipe has been known, for example, a Japanese sponge cake or something like this was patented, in fact, but otherwise most recipes are subject more to copyright law and not as much trademark law.
Tim Elliot: Okay. Let’s take a hypothetical example, for example, Ludmila’s Legal Cupcake store and your tagline was: Tastier than the law, and even better than you can imagine, or something. You would trademark that aspect, rather than the cupcake itself? I’m sticking with cakes here because I like cake.
Ludmila Yamalova: I like the sound of it, so maybe you want to jot it down and we can regroup after the podcast and see if we can trademark that. Legal Cakes or Cupcakes. You would in fact trademark just the name, the name and the logo, if there was a little cake or a hat.
Tim Elliot: A gavel.
Ludmila Yamalova: A gavel, for example, yes, next to it. That’s what you would trademark, but in terms of the actual recipe, how much flour you put in, how much sugar you put in, that’s copyrightable material, not trademarkable.
Tim Elliot: The scales of justice would work really well with two cupcakes, by the way.
Ludmila Yamalova: I like the visual. I like the visual. We’ll have to talk about it further offline so that nobody else steals our ideas.
Tim Elliot: Thank you so much. Let’s have another question now. We are on Facebook, Instagram, and TikTok this morning. This is all about trademarks on Lawgical, the HPL Yamalova & Plewka podcast. An interesting question, I think. What are the possible grounds for rejection or refusal to get a trademark for any particular product or service?
Ludmila Yamalova: There are many, many possible grounds. One possible ground, for example, is it is just ordinary. You cannot trademark a ubiquitous name or common name, something that is already in the public domain. For example, just as much as I’d love to be able to trademark my own name, that’s not unique to me. There are others with the same name. You cannot trademark that name or an ordinary element that relates to a person. There has to be some sort of distinguishing characteristics. That is one of the mandatory elements is that it has to be different. It has to be distinguished from whatever else is out there in order to qualify for a trademark. Also, you cannot trademark certain public symbols or public words, let’s say city names. You cannot take a city name or country name and trademark it to yourself. That is already called basically a common property or a public property in the public domain. You cannot trademark that. This is why we have trademark law. You cannot trade something that belongs to someone else. That is the importance of trademark law and when enforcement comes into play. It has to be distinguishable. It has to be creative as well. It has to also, in a way, be representative of the product or the service that you want to ultimately provide under that trademark. That is also an element in many ways. The idea of a trademark is that it should not be misleading.
If I trademark a name that is suggestive that I, for example, I know how to find a space, I better know how to find a space. Then if I am using it for my other services, let’s say for legal services, that is misrepresentation to the outside and misleading to consumers. One of the main elements of trademark is that it must not be misleading, and it obviously must not steal from the public, so to speak, or is already in the public. You cannot prevent me from using a word that belongs to the public use. There are a few exceptions. For example, if you take a Madonna, the singer. Madonna is not a unique name, but Madonna as a singer is a very unique concept obviously. There are some things that are involved in her brand that perhaps that particular word could be trademarked to an extent if it is associated with her image or her persona and her history. Also, often people just register trademarks and they don’t use them. You can actually lose the right to a trademarked if it has not been used, if it is a dormant trademark, because sometimes you have competing trademarks in terms of least registration, but if one has been used by one country by one business, and the other one has not been used. Sometimes you can basically override the right of a different trademark, that has not been in use, by the one that has been in use. It’s a very complex process, but generally speaking it has to be something that is distinguished from what else is out there.
Tim Elliot: It’s a tangled web that you’re weaving. But the Madonna example is a really interesting one because Madonna is – that’s her name, isn’t it? I think it’s her first or second name, but it is her name, but it’s undeniable much more than her name, and it stands for this kind of – a cultural icon is a little bit too much, but I think a lot of people would consider her that way and therefore there is a need for that image to be created.
Ludmila Yamalova: Indeed. But that’s an example of where you can actually get your trademark registered based on what you have created that goes in support of that trademark. The creation in her case is basically her legacy, her music, her performances, her name and continuity of it. There she has basically earned, if you will, the right to trademark certain aspects of that name, a lot of investment and a lot of sweat equity that went into it in order to give her the right or warrant registration of a trademark in that particular case.
Tim Elliot: Okay. We’ll stick with the questions for a short while from Facebook, Instagram, and TikTok. Here’s one for you. We’ve answered it. Can trademarks be issued on a geographic basis and geographic locations? If one exists in Dubai, can it also be issued in a different owner in America? It’s a variation on a theme you have kind of answered there. Ludmila, how would respond to that?
Ludmila Yamalova: Perhaps before we answer these kinds of specific questions, we can go back into the definition and a little bit of the Nice Classification system and the Madrid Protocol because they will help us answer these questions from a legislative standpoint. There are these two international, if you will, laws, international protocols or treaties, whatever they are called. One is called the Nice Classification system, and the purpose of the Nice Classification is to harmonize trademark registration systems in different countries. This is done by creating different categories under which trademarks related to specific goods or services can be registered. For example, within the food category, there are so many different subcategories. Think about the categorization of the different types of products and services that exist in the world. Wouldn’t it be nice to have some kind of standard groupings or categories, and that is basically what the Nice Classification system is all about. A number of countries over the years have come together and created these different categories in terms of trademark registration. All of those countries who are signatories to the Nice Classification can benefit from this harmonized trademark registration system.
Let’s say if you are in the pharmaceutical or some sort of food products, then you will know exactly under which category your product would fit. It would be the same sort of category of products you would be registering your trademark in and you would be able to benefit and rely on this classification in different countries that are signatories to the Nice Classification. Those states who are members of the Nice Classification system and which have fully adopted it into their laws and regulations will apply the same categories created by the Nice Classification system.
The U.A.E. finally adopted the Nice Classification system and that was just at the end of 2021 and that was by virtue of Federal Decree Law 156. So, as of 2021, the U.A.E. is now also a member to the Nice Classification, and therefore, it follows and to some extent it is still a work in progress, but it is basically going to use the same classifications and same categories for trademark purposes as all of those countries that are signatories to the Nice Classification.
Now, the next international legal authority is called the Madrid Protocol. The Madrid Protocol allows trademark owners protection of their trademarks beyond borders. Basically, when we go back to the question about trademark owners, if you have a trademark in one country, can you benefit from it in another country? That is basically the Madrid Protocol. How it works is a trademark applicant applies for the registration of their trademark via the World Intellectual Property Organization, or the WIPO registry. Then they can choose to register the trademark in multiple member states of the Madrid Protocol.
You need to have an originating country in which you have the trademark. For example, if I have a U.S. trademark which I have registered, then I apply through the WIPO registry under the Madrid Protocol to have my trademark registered in X number of these Madrid Protocol countries. You go into the system. From the website you can select, this is my trademark that originates in the U.S., and I want to also register this trademark in the following number of countries that are part of the Madrid Protocol by virtue of doing that. It is not by default. It is not automatic. You do need to go through the process. That is, by the way, just generally speaking in trademark. To be able to benefit from it, you do need to register it. You need to do something about it, which is different from copyright, because copyright is created upon creation. However, with trademark, in order to have an enforceable trademark right, you need to actually register it in the system. Just because you have your trademark in the U.S. system, and the U.S. is a signatory member to the Madrid Protocol, does not give you automatic protection of your trademark in all of those countries. You do need to opt in and make a concerned effort and register under the Madrid Protocol through WIPO and select in which other countries you want that particular trademark to be registered.
This obviously results in significant savings in terms of time and cost because it allows you to benefit from trademark protection in multiple countries basically at the same time by virtue of submitting one application. Once again, the good news is the U.A.E. also adopted the Madrid Protocol just at the end of 2021, a little over a year ago, and that, as I mentioned before, that was with Federal Decree Law 67 of 2021. Now theoretically the Madrid Protocol is now in effect. In terms of how it’s being practiced for the time being, it is still a bit of a work in progress, but in legal terms we are now a country subject to the Madrid Protocol, so theoretically if you have a trademark registered in the U.A.E., then you can use that trademark and register in the WIPO registry and you can also select where else you want your trademark to be protected, and in theory, vice versa. Let’s say if you have a trademark originating from Spain, and it’s registered in the WIPO registry, now you can select the U.A.E. as one of the states where your Spanish trademark would also be protected. Again, this is a fairly new law still and there are some systems that still need to be implemented and adjusted to implement the law fully, but basically at the present time, and going back to the previous questions, if you are a member of one of these countries, if you have a trademark in the U.S., and the U.S. is a member of the Madrid Protocol, so now you can select to register your trademark also in the U.A.E. without having to come into the U.A.E. and register the trademark from within the country.
Tim Elliot: Sure. Also it means that if you are looking at the WIPO registry, you can see if you are infringing on any other trademarks with your trademark in your country, I guess, as well, or if you’re about to register one. It gives you a way of being original, doesn’t it?
Ludmila Yamalova: It’s interesting. It’s a very good question because at the same time, yes, but you also brought up another wrinkle. Let’s say, yes, you are coming from the U.S. and you want to register your trademark also through the Madrid Protocol in the U.A.E., so you apply to add your trademark to the U.A.E. and then it turns out there is somebody else here in the U.A.E. that is already using a similar trademark or the same trademark. That too can happen, by the way, and that’s called challenging a trademark. There is a process as well where the trademark is just published out there for parties to comment or to challenge. It is also possible that just because your trademark is valid and existing in 10 countries, it will be equally registered in another 10 countries. But there could be some countries where that same trademark might have already been used and they have precedents and priority rights over the trademark. There are some nuances to that too.
Tim Elliot: I was going to say somebody is asking that question. What happens if the logo I’ve created for my firm exists in other countries? Should I re-create a new one? Is it a case that whoever did it first? Is there a priority in that case?
Ludmila Yamalova: It’s a fairly complex exercise because it is not just a priority. It is also use. Priority would be who registered it first. It’s priority of use or registration, because they are two separate concepts. I started using the trademark, but I haven’t registered it. Somebody else across the world could have actually registered it and maybe using it a little later. There is the timing of the use itself and then the timing of registration, and then also the extent of the use, and also perhaps to an extent popularity of that product or service. It is possible to challenge one’s right to a trademark on that basis. Yes, I know you’ve had it registered and even used it to an extent, but I use it a lot more and therefore I should have some kind of priority or some kind of rights to it over yours. For example, my use of that particular trademark is a lot more in line with the trademark itself. You are using it, but you are using it for pastries, and I am using it for pharmaceutical products. Given the name, it is a lot more apt to use on pharmaceutical products than for pastries. Therefore, you can lose out on using the particular name because it is not as important to you as it is important to me, who is in pharmaceuticals.
Again, this is a fairly complex exercise. This is why you have courts and judges who go through these different tests and analyses in deciding which should take precedent or priority, if any, and if at some point it is possible, and it does often happen, then you end up having very similar trademarks in different countries, and they exist within the borders of the particular country and their international reach, if they want to enter that same market, they will ultimately have to use a different trademark for their product.
Tim Elliot: So, do your research really is the answer, isn’t it? Know your stuff.
