The world changes faster and faster. It is not new for us. And it is also not new that we must rethink our positions from time to time to regular the activities that are already in our lives.
Personally, I believe that, now, it is necessary to rethink the possibility of coexistence between the same (or similar) trademarks for different types of software.
Many years ago, when the software was included in the WIPO´s list of products and services, in Class 09, we had a static interpretation – the same or similar marks could not coexist to identify computer programs or software in general.
At that time, in fact, there was not much software available to the general consumer. There were some text software, spreadsheet software, database software, games, and operating systems. Usually we bought these products at book or computer store, or even in supermarkets. The software was sold on the shelves in front of the consumer and each one had a defined function. In this situation, the possibility of confusion of the consumer was real.
However, during this time the world has changed. What we called “software” today is no longer the same thing. Today, with the increasingly widespread concept of “Saas”, or “software as a service”, virtually everything can be defined as software, or a software application, which would be a more modern and specific term. The place where we find them is not just a specialised store, but they are found all over the internet and increasingly in our smartphones, in our hands.
We currently have applications for the most diverse types of products and / or services. From software to call a taxi, to order food, through store sale software applications, personal relationship software applications, banks, word processors, security-oriented applications, to find people, to turn the lights of your house … everything can generate a software application!
The form of acquisition of them is also totally diverse. Some are free, others charge a monthly fee, others charge per use. But in general they are all downloadable via a smartphone or via your desktop. You simply access a website from the supplier company and download it, or you can access “Play Store” or “App Store” or something similar, choose your software application and download it.
When we compared how software marketing was done 15 years ago and how it is done these days there is an extremely big difference. We can say that we have a different product for different types of consumer being sold in a different place.
But, throughout this period, we have seen that, till today, in general, applicants for new trademark applications continue to place the protection of their products as “software in general”, as if the world has not changed.
Based on these facts, can we maintain the protection of these products / services with only a generic description like “software in class 09”? Having this general specification, in a legal aspect, we can say that a similar trademark protecting an application that speeds up the processing of a smartphone, and an application for food sales could not coexist. This is not my personal opinion.
I believe that today there is a phenomenon of an increasingly strong software application specialization with an increasing number of software applications, and the consumer is increasingly aware of the limitations of each of them. It’s like trying to prevent different types of stores from having the same brand because they protect commerce in general. In fact, consumers can identify different types of stores and products, as well as identify software applications with different functions. It is like to buy something at the supermarket. Probably you will not buy a chocolate when you need a lamp, only because they have the same trademark.
Therefore, the indication of the application protection with the generic description that they are just “software” in class 09 is no longer enough. Believing that this kind of protection would prevent third parties from using the same trademark, or a similar trademark, to identify applications for other purposes no longer satisfies me.
I believe that today, the protection of these applications should contain their limitations. They are software / applications for a particular purpose, both in class 09 and class 42. The generic description can and should be discussed, as the products have changed, the consumer has changed; the mode of marketing has changed. We need to modernize our understanding of this protection and its limitations. It is no longer possible to prevent software applications focused on totally different markets from being able to live only because of a legal concept that has already passed.