HomeBusiness DigestIntellectual Property Perspectives: Distinctiveness of new types of marks

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Recontextualising concepts

To recap from our last week’s contribution, the prerequisite threshold requirements for the registration of trademarks are; (i) list of probable signs, (ii) capability of graphical representation, and (iii) distinguishing capacity. The list of probable signs is non-exhaustive, open-ended and non-exclusive to include sounds, smells, colours and three-dimensional marks, so long as these are distinctively perceptible. As such no sign is excluded by reason only of not being explicitly referred to by statute.

Distinguishing capacity

A sign can be possessive of either natural/ inherent distinctiveness or acquired/factual distinctiveness. Inherent distinctiveness is the innate or intrinsic quality or capacity to distinguish, as is the case with fanciful or arbitrary marks which naturally convey no other message except in the context of a particular undertaking’s goods or services, or where its ordinary meaning bears no connection with the nature of goods or services it relates to — distinctiveness by  nature.

Acquired distinctiveness on the other hand is derived from the use made of the sign from which use the consumer has come or has been educated to associate the mark with the goods or services of a given undertaking. That is to say, the mark acquires a secondary meaning from its ordinary meaning — distinctiveness by nurturing.

As such, the distinguishing capacity serves to guarantee the identity of the marked goods or services to the consuming public by enabling them, without any possibility of confusion, to distinguish the goods or services from others of a different origin.


Distinctiveness test

In this vein the test of distinctiveness  entails assessing the perception of the relevant section of the public, and the goods or services over which the mark is sought to be registered. That is to say, the test employed is one premised on the expectations of an average consumer who is reasonably well-informed, observant and circumspect in relation to the category of goods or services in question. It is an objective or factual test  as opposed to a subjective one.

In this determination, a mark’s  distinctiveness is adjudged in terms of statutory provisons relating to  (i)  absolute grounds  of refusal, then (ii) relative grounds  of refusal. The basis of refusal of registration is hinged on public policy perspectives aimed at achieving equity in  regulating the conflicting interests between the consuming public, the  proprietor  of the mark, and competitors alike. This is necessitated by the monopoly conferred upon the owner by registration of the mark against the overall policy objective of  promoting the free movement of goods and services for the common good of everyone in society.

Approach adopted

In assesing or adjudging distinctiveness, the courts: (i) make no distinction between the  various types of  marks, (ii) adopt a more liberal interpretation of the relevant statutory provisions taking into account the underlying public interest of each ground of refusal, and (iii) despite the apparent overlap and interplay of the underlying public policy interests, each ground is treated independenly of the others.

Time of assessment

Distinctiveness is assessed at (i) the time of filing the application for registration, and (ii) at the time of registration. The rationale being that whereas a  mark might have been adjudged distinctive as at the time of filing, it may yet lose the distinctive quality through improper use in the interim period prior to registration. This is particularly the case where the mark is preyed upon, copied and improperly used by competitors.

Four-rung test

Courts have formulated a four rung test in this regard, viz; (i) what impression the sign would give to the average consumer of the goods or services,(ii) what effect the grant of a monopoly would have on competing traders, (iii)  if the mark consists essentially of the nature of the goods or services, does it nonetheless possess some unique elements which would elevate it above the level of being purely descriptive so as to impress itself on the concerned consumers that is a badge of origin? (iv) Even though each of the elements fall foul of the above three tests, do these elements, in combination, merit protection as a trademark because their combined effect is to portray the mark as unusual, striking, fancy or unique?

In undertaking this exercise the courts appraise or look at the mark as a whole, ie visually, aurally and conceptually. Applying then the above average consumers’ test and principles to the new types of  marks, we distill the following judicial, legislative and conceptual innovations:

In Linde AG vs Deutschess Patent und Markenant (ECJ) (2003) RPC, a case that concerned  three-dimensional shapes of goods, the court held that (i) it was not permissible to adopt a stricker test for assessing and adjudging distinctiveness of three-dimensional marks than that used for all other types of marks; (ii) in practice it is however more difficult to establish the distinctiveness of product shape marks than that of word or figurative marks, (iii) all grounds of refusal of registration mutatis mutandis i.e the necessary changes having been made, apply to three-dimensional marks as applies to all other marks; (iv) the underlying public policy objective of refusal was to preserve the availability of the products to other traders, and thus, where necessary, the courts cannot accord monopolistic rights to one undertaking only.

The Libertel Groep Bv Benelux- Merkenbureau (2004) R.P. case reaffirmed the approach adopted in the Linde AG case as equally applicable to colour marks without exception. Observed  further, however, was that (i) under special and deserving circumstances, colour per se, not spatially delineated, is capable of distinctiveness through proper and repeated use and (ii) the assessment of colour marks should be undertaken with due regard being had to preserving public interest of not unduly restricting the availability of colours to other competing commercial actors.

Further, the wider the range of products over which the mark is sought to  be protected the more excessive is  the monopoly likely to be conferred, hence the more likely too that the monopoly right is to conflict with the maintenance of a system of undistorted competition and aforementioned public interest.
Smell marks

In the Vanootseap Onder Firm Senta Aromatic Marketing’s Application (1997) ETMR which concerned the “Smell of freshly cut grass” mark of tennis balls, the court found the smell of freshly cut grass as sufficiently distinctive to the average consumer to instantly recognise it from experience, hence constituting a registrable trademark within the meaning of the relevant provisions of Article 2 of the EU Community Trade Mark Regulations (CTMR).

Sound marks

Although in the Shieldmark BV vs Joost Kist H.O.D.N Memex (2004) ETMR case the court confined itself to addressing the question of graphic representation, requirement chances are that given the opportunity to adjudge the issue of distinctiveness, it would have no doubt invariably adopted the liberal interpretation approach to grounds of refusal of registration as applied in previous decisions before it.

Alas our courts have not yet had the privileged to preside over such issues. That notwithstanding, it would appear that when similarly confronted, our courts would no doubt adopt the same liberal approach in the same manner South Africa and the rest of the civilised world has embraced.

e-mailhenripasi@gmail.com, legacyipchambers@gmail.com

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