In the history of trademark development, initially the notion predominated that trademark aimed to guarantee and protect the interests of consumers and to improve the “quality of information” for possible consumers. However, at the moment, the functions that trademark serves have changed in light of the recent and current economic and social developments. Therefore, one of the important purposes of a trademark is to indicate the source of goods and services.489 The current trademark laws around the world have been affected by the Industrial Revolution. In particular, trademarks have become an important bridge between producers and consumers that is vital for the former. According to this model, a trademark indicates the original source of the goods and services that are “passed” from the producer via the “middleman to ultimate purchasers”.490 For instance, producers who attach trademarks might be
488 - ACOMC, Art. 55.
489 -Kalistratova Zhanna, Modern Concept of Trademark Protection and Their Application to Internet Use, Central European University, Legal Studies International Business Law (2007), p. 16. [hereinafter Kalistratova Zhanna, Modern Concept of Trademark Protection and Their Application to Internet Use].
490 - Raveen Obhrai, Traditional and Contemporary Function of Trademarks, Journal of Contemporary Legal Issues, Vol 12:16, (2001), p. 16. [hereinafter Raveen Obhrai, Traditional and Contemporary Function of Trademarks].
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hundreds or thousands of kilometres away from their customers, and by affixing a mark to their goods and services, the producer informs the purchasers about the source of said goods and services.
Historically, this notion was created by the practice of American courts in the 19th century. For example, in 1871 and 1916, in different cases US courts asserted that the most common function of a trademark is to indicate the source of goods and services. Therefore, trademarks in the late nineteenth and early twentieth centuries functioned as indicators of both the source and ownership of the goods and services.491
Moreover, the producers assure the consumer that the goods and services coming into the hands of consumers derive from the same sources. Consumers are also assured that, if there are two or more kinds of articles or products which bear the same mark, those products come from a single or the same source.492 Therefore, according to Frank Schechter, the accurate function of a trademark is “to identify a product as satisfactory and thereby to stimulate further purchase by the consuming public”, and ultimately the “manufacturer or importer [actions] may reach over the shoulder of the retailer”.
However, if a trademark is unable to achieve this purpose, the result will be in contrary to the interests of the producer or the owner of a mark and the competition will benefit. As a result of such misuse of products or goods, on the one hand the product will lose its credibility and validity among the consumers, and on the other hand, unfair competitors will take illegal advantage and consumers will no longer rely on the goods and services.493
However, according to Elmer William, the fundamental “function” of a trademark in the current era is to show the “degree of quality”. Therefore, the original purpose of a trademark is to prove the
“degree of quality” for the consumer or purchaser. From this perspective, the consumer’s concern is not about the producers who made the product, but is rather about their desires and hopes. In other words, they consider their own interests, the product quality and how long it will last. According to William, indicating the source of goods or services is a secondary function of trademarks.494
Unlike Elmer William, Rabeen Obhrai does not prioritize the importance of quality and favours the source identification function of trademarks. He explains that if there is no “product identification”, the actual “competition over quality among producers” would be considerably damaged. As a result of lack of distinguishing features between goods and services on the market, the producer will have no incentive
491 -Kalistratova Zhanna. Modern Concept of Trademark Protection and Their Application to Internet Use, p. 5.
492 - Frank I. Schechter, The Rational Basis of Trademark Protection, Harvard Law Review, Vol. 40, (1927), p. 815-818.
[hereinafter Frank I. Schechter, The Rational Basis of Trademark Protection].
493 - Frank I. Schechter, The Rational Basis of Trademark Protection, p. 818.
494 -Elmer William Hanak III, The Quality Assurance Function of Trademarks, Fordham Law Review, Vol. 43:3, (1974), p.
364. [hereinafter Elmer William Hanak III, The Quality Assurance Function of Trademarks].
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to produce high-quality products.495 Therefore, in this view, source indication is the first and primary function of trademarks.
In this regard, however, there is the question of whether trademark owners can use different marks to identify one source and product, or in contrast whether one mark should be used for one product, the so-called “single-signal rule”.496
It should be mentioned that the source identification function does not distinguish a product from another class of products. For instance, according to the Nice Agreement, milk is included in class 29, whereas fruit juice and water are included in class 32. Therefore, if a water company uses the Panjshir (a province in the north of Kabul) mark to identify mineral water (which falls under class 32 of the Nice Agreement), then such use is correct and it indicates the source of mineral water which is produced in Panjshir. In contrast, if the company uses the Panjshir name as a mark for milk products, which falls under class 29, the Panjshir mark will not be protected against the milk product or some other sort of related class, like jam, unless the Pahjshir water company has registered the Panjshir mark on milk or jam products in advance. This should be clearly stated during the registration process at the CBR office.
However, there is the idea of “one mark per source” or “the single signal rule”.497 There is the question whether one product or service needs to use different words, logos and signs as marks to identify and distinguish them from other goods and services. For instance, according to Afghanistan Official Gazette issue number 830, 2004, the company “AVENTIS PHARMA S. A. ANOTY – FRANCE” applied to register and use the following on its class 5 goods: “NUSEPTIL”,“BENASIA“,
“REGIVAS“, and “LUILAT”.498 According to David W. Barnes, trademark law should protect only one mark for one source including the licensee, subsidiary and other legally permitted users. Under the “the single-signal rule”, in Afghanistan the AVENSTIS PHARMA S. A. ANOTY company would not have the trademark rights for all categories of its class 5 goods, even if the AVENSTIS PHARMA company uses all those words on all of its class five goods. Therefore, according to this notion, one mark
“NUSEPTIL” would be used for one source of goods. Another practical example is the “KAYABAI INDUSTRY CO. LTD. JAPAN, Company” that in 2004 applied to register “KAYABA”, “K Y B”,
“KYB” and “Excel-G” in class 12. In this case, the CBR office permitted registration of the marks for
495 - Rabeen Obhrai, Traditional and Contemporary Function of Trademarks, Journal of Contemporary Legal, Vol. 12:16 (2001), p. 19.[hereinafter Rabeen Obhrai, Traditional and Contemporary Function of Trademarks].
496 - The term “single signal rule” has been used in the article of “One Trademark per Source” written by David W. Barnes who is professor of law at Seton Hall University, New York, USA.
497-David W. Barnes, One Trademark Per Source, Texas Intellectual Property Law Journal, Issue No 1, (2009), p. 7.
498 - Class 5 covers “the pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax;
disinfectants; preparations for destroying vermin; fungicides, herbicides”. See the Nice Agreement at:
http://www.wipo.int/wipolex/en/details.jsp?id=12617.
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one class. Moreover, the ATML allowed the registration of different words, logos, signs and pictorial marks for ADVENTIS PHARMA S. A. Company. While the ATML has not articulated these issues explicitly, in practice, as Official Gazette issue number 830 2004 has proven, “the single-signal rule”
has not been accepted in the legal system of Afghanistan.499
The “the single-signal rule” theory would serve to enhance competition, “reduce consumer search cost” and inform the purchaser of the actual source of the goods. From a competition perspective, it would be easy for a rival producer to describe their goods to the purchasers. For instance, the producer of Chaika Milk (which is a Pakistani company) could very easily compete with Milk Pike products, another Pakistani Company. In the above example, if “AVENTIS PHARMA” were to select only one of the desired marks (for example “NUSEPTIL”), other pharmaceutical companies could and likely would choose the remainder. This would impact negatively on the advertising and marketing of “AVETIS PHARMA” in the pharmaceutical industry. Trademark laws do not adhere to “the single-signal rule” in practice. A company can register as many marks for one source as it pleases. For example, the Coca-Cola Company has registered more than 500 different trademarks.500
In Afghanistan the ATML, as has been mentioned, does not follow “the single-signal rule.” As Article 4 of the ATML explains: “Trademarks consist of (one or more than one) names, words, signatures, letters, figures, drawings, symbols, titles, seals, pictures, inscriptions, advertisements or packs or any other mark or a combination thereof”. 501 Therefore, based on the ATML, a person who wants to select a trademark for the purpose indicating the source or quality of goods or services, or for any other reason for that matter, then he can register different names, words, drawings or other symbols for one product or service. For instance, according to Afghanistan Official Gazette issue No 1192/2015, a Korean company by the name of GM KOREA 1-199 Cheongcheon Gu, Incheon Korea registered a trademark which is composed of the same word but with some changes at the end of those marks for its class 12 products.502 Thus, it can be concluded that, in Afghanistan, a company can select different marks for one product or service.
Consequently, to indicate the source of goods and services and inform the consumers of the quality of the goods and to maintain product consistency, the advertising function of trademarks was
499 - Ministry of Justice, Official Gazette, Issue No 830, (2004).
500 - Refer to USPT Office at : http://www.uspto.gov/main/trademarks.htm.
501 -The English translation of the ATML is based on an unofficial translation provided by WIPO, Available at:
http://www.wipo.int/wipolex/en/text.jsp?file_id=235961. The English translation of the law, partially, is not in consistency with the original Dari official text that has been issued in the Official Gazette Issue No 995, (2009).
502 - RAVON R2, RAVON R3, RAVON R4, RAVON R5X, RAVON R7, RAVON R7X, RAVON R7V and RAVON NEXIA R3. Official Gazette Issue No 1192 (2015), p. 22-23.
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proposed by scholars. The next section addresses the importance and function of advertising for indicating the source and quality of products and services in the market.
3.8.1. Advertising as a means for indicating the source of goods
According to some scholars,503 in addition to performing their primary functions, trademarks also have a
“secondary function”, the “advertising and marketing” function. At the moment, the emergence and development of the internet and other technological advances play a fundamental role in delivering the message of producers to the consumers. One of the ways in which this message is delivered is the usage of trademarks. Trademarks indicate the source and quality of the product to which they are affixed as well as inform the consumers about the product’s quality and validity. Advertising facilitates the process of introducing goods and services into the market and ultimately “sells the goods and services”.504
The advertising function of a trademark serves two main purposes: firstly, it shows consumers that the products belong to a particular company, and consequently proves the “goodwill” of a company.
Secondly, it provides the facilities for companies to communicate information pertaining to their goods and services to the consumers. The truth is that both of these functionalities are interrelated.505 In other words, advertising performs two different functions. The first is “informative” and the second is
“persuasive”. From the economic point of view, streaming information about the product or goods is the most vital function of advertising. However, sometimes advertising is not only used to inform the consumers of the quality and source of goods and services. It also persuades and impacts the consumer.
Moreover, advertising provides incentives for the seller and producer to sell and produce more, and stimulates producers “to work longer and harder” to find markets for their products. And consequently, advertising speeds up the dissemination of goods and services.506 Therefore, the basic rationale for using advertising to introduce goods and services is the economic value of advertising. As a result of using such tools in commerce, the producer can reach the consumers easily.
The advertising function of a trademark “acts as a commercial magnet”. If a trademark does not serve the purpose of standing for consistent quality, the advertising function will be of no value.
Accordingly, there is a close relationship between the advertising function of a trademark and the consistency of quality of the goods and services. For example, a company advertises its trademarked
503 - For example Mohammad Amin Naser, in his article Re- Examining the Function of Trademark Law, acknowledged the secondary function of trademark.
504 - Mohammad Amin Naser, Re- Examining the Function of Trademark Law, p. 101.
505 - Jerome Gilson, Brinks Hofer Gilson and Lione, Trade Marks: The Future of the Advertising Function, University College London Institute of Brand and Innovation Law, London (2011), p.1.
506 -Ralph S. Brown Jr., Advertising and Public Interest: Legal Protection of Trade Symbols, The Yale Law Journal, Vol.
57:1165 (1948), p. 1169. Available at: http://digitalcommons.law.yale.edu/fss_papers
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products through different channels and media, and consequently the public will be convinced by the advertising to use the advertised goods and services for the first time. If the consumer, after using the trademarked products, concludes or perceives that the product is of low quality or is inconsistent with the quality of previously used goods and services, the trademark’s advertising function will fail to achieve its objectives and thus lose value. If the advertising function of a trademark is not consistent with the quality of the product to which it is affixed, the advertising function of the trademark will not be beneficial.507
The advertising function of trademarks has been reflected neither in the laws and regulations of Afghanistan, nor in the practice of the Commercial Court. The Commercial Court has devoted no attention to the advertising function of trademarks. Nor does the ATML contain any clauses or sentences that explicitly or implicitly touch upon the advertising function of trademarks. Moreover, in practice, the advertising-related dimension of trademark effects will not work in Afghanistan, because trademarks and matter pertaining to them are not yet well developed and have not been institutionalized in Afghanistan. Furthermore, most the people have no access to different tools of advertising, especially in the rural and countryside areas.
In industrial countries in which trademarks have been institutionalized, producers provide more information about the components, ingredients and other specifications of the products that are not considered trademarks, and which are instead referred to as “labels”. Therefore, labelling in general is not counted as a trademark.
3.8.2. Labelling and other information are not trademark source indicators
In the previous section, the different purposes and functions of trademarks were discussed. In this section, we have to distinguish between the functions of trademarks on the one hand and labels or tags on the other. The former indicate the source of goods and products, distinguish different products from each other, show ownership of the goods or advertises them. The latter provide information about the goods and services. The concept of labelling is wider than the notion of trademarks. The concept of trademarks indicates the relationship between a product or service and its producer or seller (in case of selling by an agent or other retailers). In addition, a trademark stands for the quality of previously used goods or services as well as ownership of the products. The label or tag provides all necessary information not only about the owner of the goods or services, but also about the goods and services themselves and gives explanations about their quality. It provides information about the product components, instructions for usage, date of production and date of expiry, conditions for keeping or
507 - Patricia Kimball Fletcher, Joint Registration of Trademarks and the Economic Value of Trademark System, p.321-22.
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storing the product, the country that product was made in, side effects of the product, slogans and so on.508 Moreover, labelling informs the consumer about the size, dosage, quantity, price of products as well as the company name, usage warnings and so on. Consequently, labels do not function as trademarks do, and should thus not be equated to them.509
A trademark may be printed jointly with a label or it may be attached to a product or service separately from the label. However, both trademarks and labels are used for introducing the quality, ownership and components of products.510
Distinguishing between trademarks and labels is mostly relevant in the context of their legal protection. Trademarks have traditionally been protected against misuse and protect the owner of a mark against unfair competition, while labelling provides necessary information about the quality, components and ways to use goods and safeguards the users of a product. Labelling has no legal function. Rather its function is to provide more information about the product. If there are similarities and resemblances between the same goods in terms of the information that the first producer of the product already provided, the first producer cannot impede the later producer from providing the same information with regard to the same type of product. In contrast, in a trademark case, a competitor cannot use the same or similar mark to identify his products. The ATML makes no provision for legal support or mechanisms via which labels are protected.
As mentioned in the previous sections, trademarks serve multiple functions. Initially, trademarks protected the interests of the consumers. From this point of view, the legal function of trademarks was to indicate the source of products. From an economic point of view, trademarks serve to reduce consumer search costs and the trademark owner is obliged to maintain the quality of his goods and services and save the consumer’s time. The consumer does not need to enquire about the quality because he has already used the products and relies on their reliability. Moreover, another function of trademarks is to protect the producer or owner of a trademark. At the same time, according to some scholars, trademarks distinguish products from one another.511 In addition, they also have a secondary function, the advertising and marketing function. According to this notion, essentially the trademark sells the product
508- W. L. P. A. Molengraaff, The Nature of the Trade-Mark, Yale Law Journal, Vol. 29 (1920), p.306. [hereinafter W. L. P.
A. Molengraaff, The Nature of the Trade-Mark].
509 -Shoen Ono, Overview of Japanese Trademark Law, Chapter one, 2nd Edition, Tokio: Yuhikau, (1999), p.17. [hereinafter Shoen Ono, Overview of Japanese Trademark Law].(available at: http://www.iip.or.jp/e/e_publication/ono/index.html. Last visited October 15.
510 -W. L. P. A. Molengraaff. The Nature of the Trade-Mark, p. 306.
511 - Sidney A. Diamond, The Public Interest and the Trademark System, Journal of Patent Office Society, Vol. 62 (1980), p.
511 - Sidney A. Diamond, The Public Interest and the Trademark System, Journal of Patent Office Society, Vol. 62 (1980), p.