The Spirit of a Trade Mark is Its Distinctiveness

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The spirit of a trade mark is its distinctiveness


S j tubrazy

The spirit of a trade mark is its distinctiveness. If a mark, although originally distinctive ceases to be so by reason of events subsequent to registration, it is liable to be removed from the Register subject to the provisions of section 27. The test whether or not a mark has become publici juris has been discussed in several cases the earliest of which is the decision of Lord Justice Mellish in Ford v. Foster. The proper test to decide whether a mark which was originally a trade‑mark has become publici juris, is to see whether its use by other persons is still calculated to deceive the public. If the mark has come to be so public and in such universal use that nobody can be deceived by the use of it or by its use be induced to believe that he is buying the goods of the original trader, the right to the trade‑mark must be gone.

To say that a mark has become common to the trade is another way of saying that it has ceased to be distinctive of a particular traders’ goods. This aspect has been explained in the Board & Son v. Thom & Cameron Ltd. In these words: “The true meaning of a trade mark is the association of the mark with one person’s goods. If you show that a large number of people have all been using the same mark, then it becomes a practical impossibility to say that the mark was associated with any one person’s goods.

The entry in the register of a trade mark which is publici juris at the time of original registration is, in fact, an entry made without sufficient cause and may be removed from the Register. Where a registered mark contains a common element in addition to distinctive matter, the Register may be rectified by the addition of a disclaimer of the common element.

Rectification of the register is thus a means of ensuring the purity of the register and this is a matter of the highest importance. As observed by Bowen L. J. in Paine & Co. v. Daniell & Sons’ Breweries Ltd:‑

“The purity of the register of trade marks‑if one may use the expression is of much importance to trade in general; quite apart from the merits or demerits of particular litigants. If on a motion like the present attention of the Court is called to any entry on the register of a trade mark which cannot in law be justified as a trade mark, it seems to me that the Court’s duty may well be whatever the demerits of the applicant‑to purify the register and to expunge the illegal entry in the interest: of trade, as was done in the Stone Ale case: 6 R P C 404. As a rule, the Court on being seized of the matter would doubtless put an end to the existence of a trade mark which could not possibly be justified by law.”

Distinctiveness being the essence of a trade‑mark if by the action of other traders it becomes impossible to associate the mark with a particular traders’ goods it becomes imperative to purify the register.


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