Model Answer [Element (a)]

The expression “mark includes...” under section 3(1) shows that the definition is purposely not limited to the precise words (a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof) and therefore it follows that the definition given is not exhaustive. Nevertheless, a mark must be ejusdem generis with the examples given in the statutory definition.

Among the examples given, the statute silence as to what constitutes “a device” and this might give rise to some difficulty. Reference may be made to the case of Smith, Kline & French [1976] ROC 511, Coca-cola case [1987] RPC 245 and Reddaway’s Application [1927] 44 RPC 2.

Case: Smith, Kline & French [1976] ROC 511.

[Please refer to the previous entry for further reading] The House of Lords held that a may cover the whole of the visual surface of the goods. It must be something that can be represented visually and may be something that can be applied to the surface of the goods or incorporated in the structure of the goods. The capsules themselves were not the mark but the color that covers the whole of the visible surface of it.

This case is authority for the preposition that a mark may be three-dimensional and that a mark may cover the whole surface of the goods. Therefore, it was later held that a mere container, no matter how orginal in design, nor how famous, could not be a mark.

Case: Coca-cola case [1987] RPC 245.

[Please refer to the previous entry for further reading]

Case: Reddaway’s Application [1927] 44 RPC 2.

This case illustrates the effect of unusual devices applied on goods, the method of which had never been practiced by any other trader. In this case, the court held that coloured threads running the length of hose (Blue Red Blue lines) was a trade marks. Therefore, a scheme of colouring applied to goods may be a mark.

Descriptive words may be registered as a trade mark only if it has acquired a secondary meaning. What is secondary meaning? Secondary meaning refers to a situation whereby the consumers associated the descriptive words used as the trade mark exclusively with the proprietor’s goods. This may be seen in the following case.

Case: Blue Paraffin TM [1977] RPC 473.

The owner of the proposed trade mark submitted his registration application with respect to his paraffin. It has been disputed that the words to be descriptive of the character of the goods and therefore registration ought not to be granted. However, the court found the applicant after having regards to the evidence that the mark had by reason of its customers came to be identified with the applicant’s paraffin and that there was counterfeit paraffin dyed in blue by rival traders in order to reap an advantage from the reputation the applicant mark had enjoyed.

Another important point worth mentioning as far as mark is concerns is the visibility of the trade mark on the products. Section 3(2)(a) provides that “references to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark”. There is nothing in the definition of the mark or in the reference to visual representation under the aforementioned provision which expressly directed to the size of the mark. This issue had been examined in the following case.

Case: Unic S.A v Lyndeau Products Ld (1964) RPC 37.

In this case the mark was a word “Everglide” applied on a pen. Though the mark was very tiny and could not readily be seen but was held a trade mark by the court.