Trade Mark ordnance 2001.

1. DISTINCTIVE CHARACTER OF A
TRADEMARK
Trademark distinctiveness is an important concept in the law governing
trademarks. A trademark may be eligible for registration, or registrable, if it
performs the essential trademark function, and has distinctive character.
Trademarks can either be:
• Distinctive by nature / inherently distinctive; OR
• Distinctive through nurture / acquired distinctiveness / distinctive through
continuous and extensive use.

2. CLASSIFICATION OF TRADEMARKS
 Fanciful Trademark;
 Arbitrary Trademark;
 Suggestive Trademark;
 Descriptive Trademark; &
 Generic (Trademark).
The first three are inherently distinctive, the fourth and fifth are not. The
strongest protection is provided to the first two, the third category gets lesser
protection, whilst weak protection is provided to the fourth one. The fifth cannot
be registered at all.
Finis (Latin for end) and Servis (coined variation of service or maybe borrowed
from a different language) could possibly be suggestive marks. What may be
suggestive to one may be descriptive for another. How about Coca Cola?

3. FANCIFUL MARKS ARE NEOLOGISMS
Neologism is defined as a new word or a new use for an old word, or
the act of making up new words. Invented marks / fanciful marks are
neologisms which will not previously have been found in any
dictionary.
Combining two descriptive words would result in a neologism. But,
what if the neologism is also descriptive, e.g. EUROLAMB or
BIOMILK?

4. GENERIC TRADEMARK TERMS
Trademark protection will never be granted to the fifth
category as it describes a category of a product or service. A
generic term is the common name for the products or
services in connection with which it is used. Marks which
become generic after losing distinctive character are known
as genericized trademarks.

5. GENERICIZED TRADEMARKS
 A generic trademark, also known as a genericized trademark, is a trademark or
brand name that has become the generic name for, or synonymous with, a
general class of product or service, usually against the intentions of the
trademark's holder.
 Trademark erosion, or genericide happens when a trademark becomes so
common that it starts being used as a common name. Once it becomes
common, it cannot be granted trademark protection.
 Section 73 (1) (c) states that the registration of a trademark may be revoked on
the ground that in consequence of acts or inactivity of the proprietor, it has
become the common name in the trade for a product or service for which it is
registered.

6. ANOTHER CLASSIFICATION OF
TRADEMARKS
All categories of trademarks are to be treated on the same footing.
That being said, however, there is a spectrum of recognition of signs
as marks. The most distinctive are invented words (neologisms) and
fancy devices, then semi – descriptive words or devices, then shapes
of containers, and the least distinctive are the shapes of goods, and
eccentric marks like smells, colours.

7. ASSESSING THE DISTINCTIVE
CHARACTER
FOLLOWING SHOULD BE CONSIDERED IN THE ASSESSMENT:
 INHERENT CHARACTERSTICS OF THE MARK INCLUDING WHETHER IT CONTAINS A
DESCRIPTIVE ELEMENT OR NOT;
 MARKET SHARE HELD BY THE MARK;
 HOW INTENSIVE, GEOGRAPHICALLY WIDESPREAD AND LONG STANDING USE OF
THE MARK HAS BEEN;
 AMOUNT INVESTED IN THE MARK;
 THE PROPORTION OF THE RELEVANT SECTION OF PUBLIC WHICH, BECAUSE OF
THE MARK, IDENTIFIES THE GOODS OR SERVICES AS ORIGINATING FROM A
PARTICULAR UNDERTAKING;
 STATEMENTS FROM CHAMBERS OF COMMERCE AND INDUSTRY OR OTHER
PROFESSIONALASSOCIATIONS
REFERENCE SHOULD ALSO BE MADE TO THE GOODS AND SERVICES FOR WHICH
REGISTRATION IS SOUGHT. FURTHERMORE, AS REGARDS THE CONSUMERS, THEY ARE
THOSE WHO ARE REASONABLY OBSERVANT, WELL INFORMED AND CIRCUMSPECT.

8. SECTION 14 (1) (D)
Marks or signs that are commonly or customarily used in the
relevant trade or profession will be refused registration
under this head. These may consist of words, logos, shapes
devices…. any sign that is used commonly in the trade e.g
Comfort for beds, Clean for detergents.

9. SECTION 14 (1) (C)
The section prevents the registration of marks that are exclusively descriptive. If there is a sufficiently direct and
specific relationship between the sign and the goods / services for which it is being sought, registration will be
refused.
 Kind: Doublemint for chewing gum;
 Quality: 5star for hotels;
 Quantity: Duo or dual for speakers sold in pairs;
 Intended purpose: Easycover for floor coverings;
 Value: Overlaps with quality but could also be a reference to the value of the product or service or the consumer’s
ability to purchase, e.g Budget;
 Geographical Origin: Covered in next slide;
 Time of production of goods or rendering of services: Day by Day for milk and 24 hours for news services;
 Other characteristics: All other descriptive marks such as Options for Insurance.
If the relevant public associates the mark purely with the relevant services provided rather than linking the mark with
something unusual or particular to the goods or services, the mark will not be registrable.

10. GEOGRAPHICAL ORIGIN
A trademark is not registerable if it is clearly descriptive or deceptively
misdescriptive of the place of origin of the goods or services with which the
trademark is used [the latter part falling under Section 14 (3) (a) as well].
The analysis should cover:
 the type of goods or services involved;
 the average consumers to whom the services are offered; and
 the character of the geographic location.

11. SECTION 14 (1) (B)
Marks which are devoid of any distinctive character will be refused registration.
This is a wider provision than Section 14 (1) (c) and (d) as a mark or sign will still
be refused registration under this clause even if it has passed the conditions set out
in clauses (c) and (d). However, a mark which fails the test, for instance, under
clause (c) is necessarily devoid of possessing any distinctive character under this
clause.
For example, where a mark has been used prior to it being used in a trademark
sense, that use may prevent the mark from performing its essential function if the
first use still resonates or is deeply ingrained in the mind of the relevant public. In a
case under the UK jurisdiction, the issue was whether a mark which had been used
for sport by the governing body in Brazil by the Brazilian football team until 1971
and had appeared on the shirts of famous football figures possessed any distinctive
character. The court answered in the negative holding that the prior use deprived it
of its power to signify trade origin.

12. LIMPING MARKS
These are marks that are not capable of fulfilling the role of a trademark without
further elements of a company’s branding. Where signs for which registration is
sought, and which is inherently descriptive, etc. has been used extensively but in
conjunction with another, more, distinctive mark, the issue arises regarding the
fact of distinctiveness. Slogans and shapes fall in this category.
For example, Have a Break, being a slogan, was found registrable because it was
used extensively in conjunction with the phrase “Have a Break, Have a Kit –
Kat.”

13. RELATIONSHIP BETWEEN SECTION 14
(1) (B – D) AND THE PROVISO
The grounds between the two can be justified on the basis of public interest. It is not in the
public interest to have marks and signs registered as trademarks which do not serve the
primary function of being a source identifier. Such marks and signs do not possess a distinctive
character.
There is a public interest in not registering trademarks which would prejudice the rights of
other undertakings to use ordinary language to describe the nature and characterstics of their
goods and services or prevent others in using language generally used in that particular area.
Would other traders in good faith legitimately want to use the word in the course of business?
If the answer is yes, the mark should not be registered.
However, the issue is different if the mark has become distinctive through use. Then, in such
cases, the proviso states that the mark ought to be granted registration.

14. SECTION 14 R/W SECTION 80 (1) AND (2)
• Section 14 provides for grounds which have to be satisfied when
registering for a mark and Section 80 applies to trademarks that have been
registered.
• Section 80 (1) states that trademarks that have been registered in violation
of Section 14 shall be declared invalid.
• Section 80 (2) states that trademarks registered in violation of Section 14
(1) (b), (c) and (d) shall not be declared invalid if they have acquired a
distinctive character through use.

15. SHAPE MARKS
Shape marks are treated in the same manner as other forms of trademarks with
one important exception. There are three specific grounds for refusal of
registration that apply to shape marks which consist exclusively of one of three
particular types of shape. The rationale behind these provisions are that certain
kinds of shapes can never be sufficiently distinctive to serve as source identifiers
and are incapable of distinguishing goods or services. Another reason for refusing
protection to certain kinds of shapes is that potentially unlimited protection could
otherwise be granted to shapes that ought to be protected by other Intellectual
Property laws.
A shape mark will always be judged firstly in the light of Section 14 (2) as that is
preliminary to the other grounds of refusal. If it is caught under the section, the
matter ends there. But, once that criteria is fulfiled, then the relevance of acquired
distinctiveness arises.

16. SECTION 14(2)
A mark shall not be registered if it consists exclusively of-----
• The shape which results from the nature of the goods themselves;
• The shape of goods which is necessary to obtain a technical result; or
• The shape which gives substantial value to the goods.

17. THE SHAPE WHICH RESULTS FROM THE
NATURE OF THE GOODS THEMSELVES
Marks that consist of shapes which result exclusively from the nature of the goods
themselves are denied registration under this clause. Businesses are unlikely to choose a
mark consisting of a shape which is the result of the nature of the goods as that would be
incapable of indicating origin. For example, rectangle for a picture frame, circle/sphere for
footballs, cricket, tennis, etc.
The clause does not apply where the nature of the goods are such that a variety of shapes
could fall within the category. For example, the shape of soaps consist of various shapes.

18. THE SHAPE OF GOODS WHICH IS
NECESSARY TO OBTAIN A TECHNICAL
RESULT
Where the essential functional features of the shape are attributable only to the
technical result, registration will not be granted. Shapes whose essential characteristics
perform a technical function will be refused registration because such registration
would otherwise impede the freedom of choic in respect of the technical solution.
Even if the technical result is achieved by other methods, registration of such marks
will still be refused. The rationale is to safeguard the rights of competitors in being
able to utilise the same technology. Moreover, functional features are dealt with under
Patent law and not trademark protection.
For example, Shape of a keyboard, Lego Bricks.

19. THE SHAPE WHICH GIVES
SUBSTANTIAL VALUE TO THE GOODS
Shape marks which are purchased for their aesthetic characteristics or eye
appeal are excluded. Consideration must be given as to whether the shape
gives substantial value to the product. This requires a determination of
whether the value is substantial and this, in turn, requires a comparison
betweent the shape mark for which registration is being sought and shapes
applied to equivalent articles. If the shape is inherently better, registration will
be refused. If the appearance of the good is a strong factor, the application
will for registration will fail. Appearance of goods is dealt with under Designs
law.

20. DISTINCTIVE CHARACTER OF SHAPE
MARKS
Distinctiveness in terms of shape marks is a particular issue as the relevant public in many cases
do not perceive shape marks as trademarks and average consumers are not in habit of making
assumptions about the origin of goods on the basis of the shape of their packaging. In a case
where registration was sought for 3-D shame for cheese, it was said:
“… an average consumer, surveying the myriad of cheeses on display in a good supermarket
or on a restaurant cheese platter would be astonished to be told that one of the shapes was a
trade mark. Consumers do not expect to eat trade marks or part of them… without established
use and recognition it cannot be said that they would regard shape alone as giving them a
guarantee of origin.”
Reference should be had to:
• Goods or services for which registration is sought;
• Reference to the perception of the relevant people.

21. RELATIVE GROUNDS OF REFUSAL
Section No. 17 Relationship With
Earlier Mark
Relationship With
Goods Or Services For
Which Earlier Trademark
Registered Or Earlier
Right Used
Proof Of Likelihood Of
Confusion
Notes
Section 17 (1) Identical Identical No Unregistrable per se
Section 17 (2) (a) & (b) Identical
Similar
Similar
Identical or Similar
Yes
Yes
----
Section 17 (3) (a) & (b) Identical or Similar to
earlier mark having a
reputation
Not Similar No Must take unfair
advantage of, or be
detrimental to the
distinctive character of
the earlier trademark
Section 17 (4) (a) Nothing specific but
use can be prohibited
Probably similar or
same field of activity
at least
Deception probably If prevented by law, in
particular, passing off
Section 17 (3) (b) Nothing specific but
use can be prohibited
Depends on relevant
rights and
infringement
No Other earlier rights
such as copyright,
design right or
registered design

22. SECTION 17 (1)
Where there is a complete identity of the sign and the earlier trademark and the goods or services, a likelihood of
confusion is presumed. In cases falling under this provision, two situations may arise:
• What is the impact of wholly trivial differences between the marks?
• What is the position if one mark contains the whole of the other mark, but includes additional words or a device
as part of the mark?
o As regards the first case, the trademarks do not have to be completely identical in all respects and a sign is
identical to an earlier trademark where it reproduces, without any modifications or additions, all the
elements constituting the trademark or where, viewed as a whole, it contains differences so insignificant
that they may go unnoticed by an average consumer. Both signs have to be assessed globally from the
viewpoint of an average consumer who rarely has time to make a direct comparison between the two and must
rely on the imperfect picture of them ingrained in his mind. It would be the overall impression including the
aural, visual and conceptual similarities that would matter in cases where one of the mark contains insignificant
differences.
o Where additional words or devices are used, the marks are no longer identical as differences would be apparent.

23. SECTION 17 (2) (A) & (B)
Following are the principles which assist in determining cases under this provision to assess the
likelihood of confusion:
• The likelihood of confusion must be assessed globally, taking account of all the relevant factors;
• The matter is to be judged from the perspective of the average consumer of the goods or services
in issue, who is reasonably well – informed, reasonably observant and circumspect;
• In the assessment of marks under this head, the court must determine the degree of aural, visual
and conceptual similarity between them and, where appropriate, evaluate the importance to be
attached to those different elements taking into account the natue of the goods in question and the
circumstances in which the are marketed.
• The visual, aural and conceptual similarities of the marks must be assessed by a reference to the
overall impressions created by the marks bearing in mind their distinctive and dominant
components. The perception of the marks in the mind of the average consumer plays a decisive
role in the overall application of the likelihood of confusion.
• The average consumer normally perceives the mark as a whole and does not proceed to analyse its
various details. The assessment of the similarity between two marks does not amount into taking
into consideration only one component of a complex trademark and comparing it with another
mark, but each is considered as a whole.

24. SECTION 17 (2) (A) & (B) CONTINUED
• There is a greater likelihood of confusion where the earlier trademark has a highly distinctive
character, either per se or because of the use that has been made of it. Such marks enjoy broader
protection than marks with a less distinctive character, so there may be a likelihood of confusion
even when there is a lower level of similarity between the marks.
• The average consumer rarely has the chance to make direct comparisons between marks and must
rely upon the imperfect picture of them he has kept in his mind; further, the level of attention is
likely to vary according to the category of goods in question.
• Appreciation of the likelihood of confusion depends upon the degree of similarity between the
goods and between the marks, i.e. interdependence between the marks and the goods or services. A
lesser degree of similarity between the marks may be offset by a greater degree of similarity
between the goods or services, and vice – versa.
• Mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient
for the purposes of the assessment.
• But the risk that the public might believe that the goods come from the same or economically
linked undertakings does constitute a likelihood of confusion within the meaning of the section.
There can be no confusion if the public does not believe that the goods come from the same
undertaking.

25. ANOTHER WAY OF ASSESSING THE
LIKELIHOOD OF CONFUSION
• The look and sound of the marks;
• The goods to which the marks are applied;
• The physical nature of the goods;
• The respective uses of the respective goods;
• The trade channels through which the goods arrive in the market;
• In the case of self – serve consumer items, where in practice they are respectively found or likely
to be found in supermarkets and in particular whether they are, or likely to be, found on the same
or different shelves;
• Whether the goods will be in competition of each other or not;
• The nature and kind of customer (for example, trade/professional customers would be less likely to
be confused as to origin than ordinary customers);
• The surrounding circumstances;
• A consideration of what would likely to happen if both marks were to be used.

26. LIKELIHOOD OF ASSOCIATION
The concept of a likelihood of association was said to stem from Benelux
uniform trademark law and encompasses cases where the mark complained of
merely brings the senior mark to mind, without necessarily causing confusion
as to origin. Mere association is not enough to establish a likelihood of
confusion. The likelihood of confusion must always be proved to the
satisfaction of the national court as the concept of the likelihood of association
is not an alternate concept to that of the likelihood of confusion, but serves to
define its scope.