Since the story broke on DNO on “ The More Sewo” case between Arturo Bellot and Linton Joseph many persons have been calling me to get my opinion on the case. Most persons keep referring to the case as a copyright case. While there are certainly some copyright issues involved in the productions of the DVD’s in question the case brought to court was not about copyright, but about Trade Mark and Trading Name infringement. Trade Marks like copyright of course are part of the group of intangible properties known as intellectual property rights.
Intellectual property rights are divided into two groups: Industrial property rights which themselves subdivide into two groups the first of which is designed to protect distinctive marks, signs and/ or names used to identify products/services and to associate the products or services with their producers. This group includes Trade Marks , Trading Names and Geographical indicators. The protection for these marks, signs and/or names may last indefinitely although fees may be levied by the authorities for continued use by the owner(s). The second group of industrial property rights is designed to stimulate innovation and the transfer of knowledge. In this group we find patents (which protect inventions), industrial designs (which protect the shape and form of products), and protection for the layout (topographies) of integrated circuits and Plant Breeders’ rights. The period of protection for these rights is limited. The period of protection for patents for example is twenty years.
The second “group” is Copyright, which protects literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television broadcasts(Neighbouring Rights). The period of protection for copyright is also limited and is usually calculated as a set number of years after the death of the author. We should note that the principles guiding copyright and neighbouring rights protection on the one hand and the priciples guiding the industrial property rights are very different. In the case of Trade Marks the most important point that is taken into account in a case of infringement is whether or not a buyer would be confused as to the source or producer of the good or service in question. Bogus branded goods which carry the mark of a producer who has not given authority to a third party and which goods are intended to decive the public into thinking that they are purchasing the genuine article are referred to as counterfeit goods and the law provides severe criminal penalties for such practicies. A related question is whether or not the use of a mark or name, though not confusing to the public as to its source or producer, dilutes the goodwill and commercial value of the other party’s trade mark or trading name.
The main difference between copyright and the industrial property rights is that copyright requires no formalities or registration and enjoys automatic protection in all countries that are WTO members and/or Berne Convention signatories, while protection of industrial property rights usually requires registration and other formalities. In the case of trade marks the propective trade mark owner is required to apply to the Intellectual Property Registrar for the registration of the mark and/or trading name. The registrar will search the registry of marks to see if such a mark or name is already registerd in the name of some other person or entity. If the mark is not registered and does not qualify as a “famous or well known mark” and is not offensive to public morals the registrar will proceed to accept the application and publish the application for the mark and/or name in the intellectual Property Journal which is distributed with the Official Gazette. The purpose of publication is to allow any interested party to object to the mark or name being registerd in the name of the applicant. The person wishing to object to the issuance of the mark or name has two months after the publication to object by writing to the registar to that effect. If no objection is received in the alloted time the registrar will proceed to register the mark in the class of product or service requested after the payment of the prescribed fees and issue a certificate to the applicant. Presently there are forty-five classes of products and services, the forty-fifth class comprising legal and securtity services among other services. (It would be interesting to find out how many legal practioners in Dominica have actually registered their trading names and/or trade marks)! Registration in a single class costs four hunderd and fifity dollars($450.00). Obviously the more classes that one chooses the higher the total cost of registration.
Mr. Bellot was properly advised to use the provisions of the Trade Mark Act (officially titled “ Marks, Collective Marks and Trading Names Act of 1999”) and register his trade mark and trading name. Mr .Linton had the opportunity to object to the registration of the name after its publication in the IP journal. Having failed to do so the mark was registarerd in Mr. Bellot’s name. The effect of the regisatration of the trademark and/or trading name is that Mr Bellot became the owner of the mark and trading name “ More Seewo” and anyone in Dominica wishing to use the name and/or mark for the class of goods and/or services for which the mark and/or trading name was registerd required permission from Mr. Bellot. It should be noted that Mr. Bellot only has exclusive right to the mark and/or trading name in Dominica. If Mr Bellot wishes to have protection abroad he needs to apply for registration in every country that he wishes to have the mark and/or trading name protected and pay the appropriate fees.
A cursory examination of the trade mark register seems to indicate that persons involved in music and entertainment locally are the most active in protecting their trading names or trade marks. Protection of the trading name or mark of a business is very important and one would wish that more businesses would avail themselves of the opportunity to protect their trading name or mark which is often one of the most valuable asset of a business. And yes the possibilty exists to have protection of one’s trademark or trading name protected in multiple countries by registering only in Dominica. This would however require that Dominica join the Madrid Agreement or the Madrid Protocol which so far Dominica has not done.
Disclaimer
This article and subsequent articles are provided for informational purposes only and do not constitute legal advice. The articles are offered only for general informational and educational purposes. They are not offered as and do not constitute legal advice or legal opinions. Legal matters are often complicated. For assistance with your specific legal problem or inquiry please refer to a competent attorney.
About the Author.
Mc Carthy Marie is an economist by training. He is currently Chairman of The Eastern Caribbean Collective Organization for Music Rights (ECCO) and Vice chair of the Association of Caribbean Copyright Societies (ACCS). He is also a consultant to the World Intellectual Property Organisation. (WIPO).
The author would be pleased to answer queries from readers, but does not guarantee that every query will be answered.
Very important info…keep on educating us Mark
…thank you.
A very informative and thorough article. Everyone should read it in order to educate themselves on the subject, as many seem to make the error of referring to such matters as Copyright issues instead of identifying its correct category.