Can I “trade mark” this?
A trade mark can be a name, slogan, logo or design which helps to distinguish a proprietor and their goods and services being offered. Trade marks can be important assets of a business. Marks can acquire considerable goodwill in the public domain and the goods or services being provided in relation to those marks may be associated with high quality. When a mark is first used, it may take many years for the mark and the business associated with the mark to garner goodwill in the market. But all trade marks must start somewhere.
When new businesses are started, significant time and money may be spent on the development of business names, logos and slogans, but one should also consider whether these new business names, logos and slogans can be protected through registration as a trade marks. So, the question is: what bars registration of a word or logo as a trade mark?
A trade mark is defined in the Trade Marks Act as a sign that is capable of being graphically represented and capable of distinguishing the goods or services of one undertaking from those of another undertaking. Simply put, the mark must be capable of being visually represented and the mark must be capable of allowing the public to associate the mark with the provision of a particular good and/or service. Whether a sign can distinguish the goods or services of an undertaking will turn on whether the sign meets the other factors as set out in the Act.
Under the Act, a trade mark is NOT registrable if the mark:
1) is devoid of any distinctive character;
2) consists exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;
3) consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
4) consists exclusively of the shape:
a) which results from the nature of the goods themselves;
b) of goods which is necessary to obtain a technical result; or
c) which gives substantial value to the goods.
5) is contrary to public policy or to accepted principles of morality;
6) is of such a nature as to deceive the public as to the nature, quality or geographical origin of the goods or services or otherwise;
7) is prohibited in Jamaica by any law;
8) is of such a nature as to:
a) disparage persons (living or dead) or institutions or beliefs; or
b) falsely suggest a connection with such persons, institutions or beliefs.
9) contains a representation of the Coat of Arms of Jamaica, national flag of Jamaica and other national symbols shall not be registered, unless the Registrar is satisfied that consent has been given by or on behalf of the Government;
10) is identical or similar to an earlier trade mark and the goods and/or services are identical or similar to the goods and/or services of the earlier mark.
Many of the rules described above are very technical. For instance, the criteria for distinctiveness have been laid out in case law and is assessed on what the average consumer of the relative goods or service in question would perceive as distinctive. A sign can be inherently distinctive or can acquire distinctiveness through use. Whether a sign is distinctive is a question of fact and the assessment of inherent distinctive character depends on the mark itself and is assessed in the context of the trade of the goods or services in question. The assessment of the distinctive character acquired through use, requires an overall assessment of the way in which the mark has been used to ascertain whether the mark has become distinctive.
The prohibition of the registration of a mark which consists exclusively of signs or indications which may serve in trade designate the kind, quality, quantity, intended purpose, value, descriptive, the purpose is to prevent the registration of signs which are descriptive of the goods or services or some characteristics of them. Examples of marks that were refused include “COFFEEMIX” for coffee preparations and “EUROLAMB” for lamb.
Signs or indications which have become customary or generic in the current language or in the bona fide and established practices of the trade, cannot be registered. Examples of marks that have become generic are CELLOPHANE and LINOLEUM.
Signs that consist of the shape resulting from the nature of the goods themselves, such as just the shape of a lemon for use with lemon products, cannot be registered. If the sign consists of shapes that are similar to the shape of the product and the shape of the product is linked to the function of the product, then the mark cannot be registered.
The prohibition of marks that are contrary to public policy or to accepted principles of morality is to prevent the registration of marks that would cause offence to a section of the public. It is likely that marks that promote drugs, counterfeiting and criminal activity will not be registered.
A recent example of a mark that was argued to be disparaging is the WASHINGTON REDSKINS trademark dispute which was argued under the trade mark legislation in the United States. Native Americans brought a lawsuit against the Washington Redskins team in an effort to have the term “redskin” be deemed offensive and disparaging. In that jurisdiction a trade mark ought not to be disparaging, scandalous, contemptuous, or disreputable. While the lower courts found the marks disparaging, the Supreme Court of the United States ruled and struck down the relevant provision stating that the prohibition itself violated the First Amendment which relates to freedom of speech.
Whether a sign is of such a nature as to deceive the public as to the nature, quality or geographical origin of the goods or services or otherwise is assessed on whether a mark gives rise to an expectation which will not be filled. An example of a trade mark that was refused registration in the UK was an application for “MCL PARFUMS DE PARIS” which had no connection to Paris or France.
To determine whether there is an identical or similar earlier trade mark will require a search of the Trade Mark Register. After the search, an analysis will have to be done to determine if an existing mark will be a bar to the registration of your mark.
Trade marks are assets which significant resources are expended. As such, they should be protected. However, whether or not a trade mark can be registered and therefore protected should be examined. The rules on registrability can be technical, and as such it may be desirable to seek legal assistance in the registration of one’s trade marks.
Helen Liu is an Associate at Myers, Fletcher & Gordon, and is a member of the firm’s Commercial Department. She may be contacted via firstname.lastname@example.org or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.