Restrictions on trademark registration

IN this instalment, we canvass the various grounds upon which trademark may be refused registration.

Opinion by Richard Pasipanodya

Reconceptualising
To be registrable a trademark must satisfy two fundamental requirements; it must be capable of distinguishing the goods or services of one undertaking from those of another undertaking, and that it must be capable of being represented graphically. In a nutshell, distinctiveness and graphical representation are key to the validity of a trademark registration. Distinctiveness may be inherent (distinctiveness by nature) or acquired through use (distinctiveness by nurturing).

Refusal of registration
Upon the trademark application for registration having satisfied the formal statutory requirements, the registrar then proceeds to undertake examination as to substance. This means whether the trademark falls outside the statutory exclusions. That is to say, by nature, is it possessed of either inherent distinctive qualities or has it so acquired same through use. The registrar may consider this upon acceptance of the application or at the instance of a third party at the opposition stage or after registration where its validity is in issue.

Grounds for refusal
The need for distinctiveness of a mark is hinged upon public policy grounds that other traders legitimately want to use the sign. In this pursuit there are basically two categories of trademark registration restriction namely, absolute grounds of refusal and relative grounds of refusal.  Absolute grounds of refusal concern themselves with the inherent registrability of the mark, the applicant and their conduct, good faith and deceptiveness. Meanwhile, relative grounds of refusal relate to the conflict (actual or potential), between the mark and the existing rights of the other proprietors.

Absolute grounds
Barring differences in territorial legislative craftsmanship the following constitute absolute grounds of refusal of trademark registration:

  • Non-conformity with statutory definition: A mark which do not conform with the statutory requirements of a registrable mark cannot be registered. That is to say, a mark which is not capable of distinguishing the goods or services of one proprietor from those of another are unregistrable. Among these are descriptive marks which serve   to designate the kind, quality, quantity, intended purpose, value or other characteristics of the goods or services, including those indicating the mode or time of manufacture of the goods or services.

Essentially these are marks or signs which another trader would wish to use in the trade. For that reason they cannot be monopolized by a single trader. It is a common characteristic that these words are normally descriptive or laudatory.  To mind are word such as “perfection”, “excellence”, “marvelous”. These can, however, be registrable if the applicant can prove that these signs had acquired distinctiveness through use as at the time of application.

Deception/confusion
A mark which would otherwise be registrable in terms of the statutory requirements may be refused if the manner in which it is used or intended  to be used would likely deceive of confuse the consuming public. The deception likely to be caused could be with respect to the nature, quality or geographical origins of the goods or services to which it is affixed.

Public order
A mark whose use is contra bonos mores or contrary to public policy or accepted moral principles and standards will be refused registration. However, in view of the fluidity of moral boundaries from one jurisdiction to another it cannot be specified by examples here.

  • Design marks: Envisaged under this heading are marks which consist exclusively of the shape, configuration, pattern or colour of the goods themselves which is necessary to produce a technical result, or results from the shape, configuration, pattern or colour of the goods themselves which gives a substantial value to the goods. This is hinged on the public policy ground not to stifle or limit the development of commerce and industry.

In mind are marks which are deceptive as to the character and quality of the good such as the use of the mark MERINO. As MERINO is associated with good quality cotton merchandise the unsuspecting public would be accordingly deceived in purchasing same with that belief ingrained in them. This restriction is meant to protect consumers from unscrupulous trade pirates.

  • Bad faith: Application made in bad faith would be typically those made to block the legitimate owner of the mark from registering the mark. That is to say, application is made in fraud of proprietorship. The position is the same where application is made with no bona fide intention to use the mark. However, this is satisfied where there is intention to use the mark through a company pending registration. In which event the mark will only be registered and be assigned to the company upon its incorporation.
  • Unauthorised use of national flags: this prohibition relates to the unauthorized use of national hence search for registration of trademarks that contain the national flags of the Paris Convention member states. So too are trademarks that contain armorial bearings, state emblems or imitation denied registration except where express written authorization has been obtained from the state. This prohibition seeks to protect the integrity and sovereignty of the member states of the Paris Convention.

Relative grounds
We stated earlier that these grounds relate to the conflict between the marks sought to be registered and existing rights of the others’ earlier trademarks.
Likelihood of deception or confusion: A mark would be refused registration if its use would likely to deceive or cause confusion to the consuming public.

  • Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775 053 007 or e-mail: henripasi@gmail.com

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