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Briefings > What makes a trade mark distinctive?

In order for a trade mark to fulfil its essential function of acting as a sign that is capable of distinguishing the goods or services (‘products’) of one ‘undertaking’ or legal trading entity from another, at the very least it has to be ‘distinctive’.

Although apparently tautologous, the answer to the question, ‘what makes a trade mark distinctive?’ is whatever makes it capable of distinguishing the goods or services of one undertaking from those of another.

A mark is distinctive by ‘nature or nurture’ when the prospective purchaser of the product knows it refers to a particular source and not to another. A made-up or coined name, such as KODAK for films, is distinctive by nature. No one would have simply seen the name for the first time and associated it immediately, with films (unlike with a mark such as TECHNOFILMS which has a direct connection with the goods). Once the connection is made through, for example, advertising, the mark then is always associated with that or a similar product. On the other hand, a mark such as ‘BLUE WATERS’ for mineral water presented in a blue tinged bottle, is per se descriptive for the goods and a very weak mark. However, if a manufacturer has invested a lot over a long period of time in promoting the connection such that a substantial section of the mineral water drinking public now associate the name with the product, then distinctiveness has been earned through use or 'nurture'. It has 'acquired distinctiveness'. The mark then becomes registrable, other things being equal.

Trade mark law in various ways (oftentimes overlapping) spells out the requirement that a trade mark must be distinctive, although it does so in a negative way. In other words, there is no positive definition of ‘distinctiveness’ in law. Thus, in section 3 (1) (b) of the Trade Marks Act 1994, it is stated that ‘trade marks which are devoid of any distinctive character’ shall not be registered. Case law helps us conclude that where signs cannot convey a particular message or information (e.g. the definite or indefinite articles: ‘the’ and ‘a’ or the conjunction ‘and’) these are per se indistinctive and are unregistrable, subject to the proviso of acquired distinctiveness. Laudatory words or terms of praise, such as PERFECTION or BRAVO, and also common slogans, are also usually devoid of distinctiveness. Although practice has now changed, in the past letter combinations that were not words were usually regarded as non-distinctive, and likewise with number combinations.

The easiest way to indicate how a mark might be non-distinctive is when it is descriptive - as with the example given above. If a mark consists exclusively of a sign which serves in trade to describe a characteristic of a product, then this is necessarily non-distinctive. This prohibition of registrability also has a public policy aspect of keeping signs free for traders to use. The European Court of Justice has clarified that it is sufficient that one of the possible meanings of a word is completely descriptive, even if there might be an additional non-descriptive meaning (the ‘DOUBLEMINT’ case). The sign might designate kind of product (‘socks’), its quality (‘all wool’), quantity (‘10 Kilos’), intended purpose (‘dog food’), value (‘top value’), geographical origin (‘Melton Mowbray pies’), time of production of goods or rendering of services (‘24/7’), or other characteristics (‘fast’).

The challenge for a marketing department that is fond of descriptors is to find a sign that is allusive and subtle but not directly descriptive. However, caution is to be advised if a misspelling or combination of descriptive words is to be used such as to create new words or ‘neologisms’. The Registry will disallow whatever is still in their judgement manifestly descriptive despite the ‘disguising’. Two descriptive words together - forming a new word that does not appear in the dictionary - is still taken as overall being descriptive (and thus non-distinctive) unless there is a true material difference between the new word and the individual words (see BIOMILD, as an example of European case law on this point). Even devices can fall under this category. A picture of a mountain for mountaineering clothing would be non-distinctive.

As for foreign words, the UK Registry will allow descriptive foreign words depending on the degree of recognition of the language. VIN DE TABLE for wine would not be acceptable here as a substantial number of UK wine drinkers would recognise the French for 'table wine'. The identical sign in, say, Korean, probably would be registrable.

Other signs that fall foul of the distinctiveness requirement would include those that are 'deceptive'. DRISTOL'S RASBERRY JAM for blackcurrant jam, for example, would be misdescriptive and of such a nature as to deceive the public (s. 3(3)(b) of the Trade Marks Act 1994). A fanciful mark such as SOUTH POLE for hazelnut chocolates, on the other hand, should not deceive anyone.

Thus, in summary and to repeat the basic message of trade mark law, what is capable of distinguishing the products of one undertaking from another is by that token a distinctive mark.

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