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Briefings > When is a trade mark capable of distinguishing?

UK law defines a trade mark as a ‘sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings’ (Trade Marks Act 1994, s. 1(1)).

In order for a sign to be able to function as a trade mark, therefore, it must be able to distinguish the goods or services of one trader (or in legal language 'undertaking') from another. This is a fundamental condition for registration not only in the UK, but in European, and indeed all trade mark systems around the world. The reason is because the role or 'essential function' of a trade mark is to establish a connection between proprietor and product or between product and source (even if the manufacturer in the case of manufactured goods is just a licensee). Otherwise put, a trade mark should primarily be an indication of origin.

Take for example a sign such as ‘LEIGHYUM on the packaging of cereal boxes. The consumer would know that there is a commercial connection between the name or brand LEIGHYUM and the cereal. If the cereal was yummy, the hope and expectation of the manufacturer is that there will be a repeat purchase. If the consumer experience was negative in some way (e.g. price too high or poor quality), the sign would act as a warning to the consumer not to buy that particular cereal again. Historically, trade marks have always served this double function of consumer attraction and consumer protection. Which is why if a trade mark is not capable of distinguishing between products no purpose would be served by the sign under which these are sold.

So, when is a sign capable of distinguishing? This is a rather important issue when it comes to the registration procedure of trade marks. An application for registration may be rejected by an official examiner if certain criteria are not met. Also, a trade mark which has happily been in use for many years may in fact lose its de facto capability of distinguishing under certain circumstances.

First of all, a trade mark can take various forms - words (which are the most common, such as LEIGHYUM), personal names (e.g. ‘DAVID BECKHAM®’), letters that do not form words - even single letters such as ‘K’), numerals, designs or logos, and shapes of goods or their packaging (e.g. the Coca Cola® bottle), or a combination of these elements. There are also other less conventional types of trade mark - colours, sounds, smells (at least in theory) and even movements. The legislator, in other words, has given a wide berth to traders to think up of ways to distinguish their products from other traders.

Next, the trade mark chosen must in some way be ‘registrable’ in the relevant consumers’ minds as distinguishing one trader’s products from another. There is no point in selling bread under the name ‘BREAD’ because if the bread bought happens to taste of plastic the buyer wouldn’t know where else to turn to buy tastier bread. In other words, the sign must not be completely descriptive. Nor can the mark be one that is already in common use in the trade, even if not descriptive. Examples could be ‘Hoover’ (for vacuum cleaners) or ‘Xerox’ for photocopying - both having once been perfectly good marks capable of distinguishing between products but now generic terms used by the respective trades. The mark, finally, needs on various accounts to be ‘distinctive’ (whether in itself or through extensive use) to be capable of distinguishing between traders’ products.

One final comment: a trade mark can only be capable of distinguishing if the same or similar trade mark for the same or similar products is not already out there in the marketplace. A perfectly good mark in itself may cause confusion to consumers - regarding the provenance of the product - if someone else has beaten you to it. It is the duty of the trader with the ‘earlier rights’ (if not the Trade Mark Office) to oppose registration of such a mark and/or to its use. Unfortunately, this is the reality of the marketplace, making it difficult at times to choose the right trade mark. The more reason to have a trade mark agent help you get your mark on the Register!

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