Distinctiveness as a requirement for the registration of a trademark under the Trademarks Act 2000

Abstract

The first chapter of this thesis delves into the issue of distinctiveness in trademarks. It is a general outline of what distinctiveness is. Thus, a trademark is any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors. This does not mean that an undertaking must inform the consumer of the actual person who has manufactured the product or even the one who is trading in it. It is sufficient that the consumer can trust in a given enterprise, not necessarily known to him, being responsible for the product sold under the trademark. The function of indicating the source presupposes that the trademark distinguishes the goods of a given enterprise from those of other enterprises, only if it allows the consumer to distinguish a product sold under it from goods of other enterprises offered on the market can the trademark fulfil this function. The first chapter introduces the notion of distinctiveness as found under the Trademarks Act 2000 and the sources of the Trademarks Act 2000. The last part of chapter 1 underlines the requirements for registration under the Trademarks Act 2000 and the element of distinctiveness which is interwoven through Article 2, which deals with the definition of a trademark under the Trademarks Act 2000, and through the absolute grounds for refusal for registration under Article 4 (1) of the Trademarks Act 2000. The element of distinctiveness found in the definition of a trademark in Article 2 of the Trademarks Act 2000, is the basis for Chapter 2 of this thesis. In fact, chapter 2 of this thesis focuses on the requirement of "capacity to distinguish" found in the definition of a trademark Chapter 2 also discusses the difficulty that arose in the UK in interpreting the interplay of this definition with the provisions relating to the absolute grounds for refusal of registration and the judgement of the European Court of Justice which ironed out the difficulties that arose. This leads us to chapter 3 of this thesis which gives a general introduction to the absolute grounds for refusal for registration found under Article 4 (1) (a) (b) (c) and (d) of the Trademarks Act 2000. In particular, chapter 3 discusses in detail the absolute ground for refusal for registration of devoid of any distinctive character under Article 4 (1) (b) which is referred to as the catch all provision, in that it is a general provision which catches all instances of non-distinctiveness. In comparison to Article 4 (1) (b), Article 4 (1) (c) and (d) are more specific provisions and deal with marks that are descriptive, customary and/or generic. This is what is tackled in chapter 4 of this thesis. Trademarks that fall foul of the absolute grounds will not be registered unless it can be proved that they have acquired a distinctive character through use. This paves the way to the last chapter of this thesis, chapter 5, which discusses the proviso under Article 4 (1). The proviso is applicable to Article 4 (1) (b) (c) and (d) of the Trademarks Act 2000, in that trademarks that are either lacking in distinctive character, are descriptive, customary and/or generic may still be registered if it is shown that they have become distinctive through use.