Descriptive marks cannot be registered
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The Trade Mark Act 1994 does not allow trade marks that consist of either
customary language or that are descriptive of the goods / services applied for
to be registered. This is because the Act seeks to prevent one owner claiming a
monopoly in a combination of words that are either customary or descriptive.
However, Proctor and Gamble were NOT refused from registering the mark
‘BABY-DRY’ as a Community trade mark for nappies. Although initially, the Board
of First Appeal said that BABY-DRY consisted exclusively of words which may
serve, in trade, to designate the intended purpose of the goods, it was held
that BABY-DRY has a ‘syntactically unusual juxtaposition’. It was made clear
from this case that as regards trade marks composed of words, such as the one in
issue here, descriptiveness must be determined not only in relation to each word
taken separately but also in relation to the whole which they form.
The Proctor and Gamble decision was rather unusual, and it must be remembered
that descriptive words cannot generally be registered as trade marks, as this
would prevent other traders using terms to describe their goods. This fact was
reflected in the Wrigley Company decision. Wrigley wanted to register the mark
DOUBLE MINT for chewing gum. The Court of First Instance said that a sign must
be refused registration If at least one of its possible meanings designates a
characteristic of the goods or services concerned.
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Article Published/Sorted/Amended on Scopulus 2007-06-29 22:27:40 in Legal Articles