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 Trademarks Restrictions

To be registrable a trade or service mark has to be apt for the distinguishing of the goods or services from those of others.

Therefore to be admissible the mark may not:

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Consist of a sign giving only a mere description of the goods or services;

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Consist of solely a sign designating the kind, quality, quantity or purpose of the goods and services involved;

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Consist of too simple visible signs, not giving the mark a proper identity or distinctive characteristic, such as only a star, a circle, a square, a single letter or a single number.

Neither will it be possible to obtain registration for example for the mark 'BEER' on beer-products; or 'CAR' on automobiles; or 'CARPET' on carpets.

Similarly, due to its deceiving nature, is it not possible to use 'BEER' as a trademark on pops and sodas; 'WHISKEY' on apple cider; 'BUTTER' or  'a picture of a cow' on margarine products; the sign 'SUGAR' or a picture of a real sugar on artificial sweeteners or sugar-substituting goods. 

Same is applicable to a sign consisting of a geographic indication which is false and/or deceiving to the public, like 'FRENCH' on wines, being too general and thus lacking distinguishing nature when concerning a wine-product of France, or due to its deceiving nature when concerning a wine-product of another geographic region.

Here I would like to draw your attention to the fact that although appellation of origin is not specifically ruled by our legislation, still the Office/Bureau may raise objections to the registration of a mark if it considers same of a deceiving nature: 'BORDEAUX WINE' or 'CEYLON TEA' on products not originating in those areas. 

Also, and nevertheless the fact of true and correct indication, it will not be possible to obtain registration of a sign consisting of an indication of the main organic source of a product, due to unfair monopolizing of the terms: e.g. 'ALOE' on aloe-derived products; 'CORN' on flour; 'GLASS' on glasses or bottles; 'CHINA' on china-wares.

Another objective principle leading to invalid, or, if not refused by the Bureau, to very weak registration, is the trademark consisting of a common or generic name of a product as the exclusive sign.

Common or generic names are those that through current language or established trade practice became the customary designation of goods and services, and thus the descriptiveness thereof.

To mention only a few:
goods               : 'desk calendar'; 'foot-wear'; 'wall panel'; 'liquid soaps';
services            : 'fast food'; 'motels'; 'rent-a-car' or 'car-rental';

Sometimes it may have been the very own trademark owner whom through advertising, description at sales or by other means, has made his trademark a common name. In said cases he will remain the owner of said trademark but cannot avoid nor stop others in using same term as a secondary descriptive sign with his trade-mark. ('FRIDGE' or 'Frigidaire'; 'FAX' or 'facsimile';  etc. ....)

Objections can also be raised to or the registration denied if a trade or ser-vice mark:

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Is identical to or concurs generally with a mark for same kind of goods or services, registered on behalf of a third party or earlier filed by same.

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Concurs in such a way with a mark already registered on behalf of or previously filed by a third party, or well-known in Aruba as the mark or as the trade name of a third party, that public confusion may arise with concern to the origin of the goods or services.

A mark cannot be registered if it constitutes the reproduction, in whole or in part, the imitation or the translation, liable to mislead the public of a well-known mark belonging to a third party. It would run against the interests of consumers if a mark resembling or imitating a well-known mark to the extent of confusion is permitted.

This is not only applicable to filed or registered well-known marks, but also to those not yet registered nor used in this jurisdiction.

══ E.g. should 'Coca-Cola' not be registered or even filed in Aruba, still the Office would refuse its registration on behalf of another party. This not only for reasons of deceiving of the public, but also because piracy or forfeiting can be very harmful to the good reputation of the national commerce, thus the national economy.

Denial or objection is likewise applicable to the registration of a trade mark for other products than those for which the well-known mark is used, even when concerning totally different goods or services, when the use of the identical or similar mark, or the imitation thereof may mislead the consumers by making them believe that there exists a link to the well-known mark.

 Thus, nevertheless the fact a trade mark registered in a certain class may generally be used by someone else on his goods or services, resorting under a different category and its registration requested, still the registration thereof on behalf of the latter can be denied or its registration disputed by the first owner on grounds of deceiving to the public with respect to the origin of the goods and/or services, or on grounds of unfair competition.

══ E.g. Class 12: automobiles - trademark 'Chevrolet' registered by General Motors.

It may be deceiving to the public if a third party uses the service mark 'Chevrolet Rent-A-Car' and maybe not even using cars of said brand.

Likewise are inadmissable marks which violate any other right of a third party, e.g. infringement of copyrights or rights in an industrial design, or marks contrary to rules on prevention of unfair competition, for example, a mark containing the representation of a product of a competitor.

Further restrictions:

1. Words or illustrations contrary to morality or public order.

Note: A mark contrary to morality may be a mark containing an obscene picture, and contrary  to public order when it is offensive to religious sensitivities, to law enforcement or to a nation's safety.

2.  Coat of arms, flags or other state emblems, or any imitation thereof in the heraldic point of view, of a state-member to the Paris Union, nor the coats of arms or any slight alteration thereof of the Kingdom of the Netherlands and /or any part of said Kingdom, including the one of a public entity established therein.

3.  Official marks or stamps for control or guarantee, including any imitation thereof from a heraldic point of view, used by states-members to the Paris Convention for same or equivalent kind of goods or services.

4. Names, the abbreviations thereof, and emblems, or slight alterations thereof, of recognized international organizations, or parts thereof. 

Marks representing, resembling or imitating the items described under the above points 2 to 4  cannot be registered, but for duly authorization by the relevant authorities of the involved State or International Organization, since they would give otherwise a false impression of an official link between the goods and services concerned and the State or Organization.

This is in accordance with Article 6ter of the Paris Convention for the Protection of Industrial Property by which the states-member agree to refuse or to invalidate the registration, and to prohibit by appropriate measures said use without duly authorization by the competent authority.

                                 
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Copyright 2004 Intellectual Property of Aruba
Last modified: april 25, 2007