“A trademark acquires distinctive character following the use which has been made of it where the mark has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings.” Critically discuss.
The Trademark Act of Jamaica 1993, section 2 (1), defines a trademark as, “any sign that is capable of being graphically represented and capable of distinguishing the goods or services of one undertaking from those of another undertaking.” It goes further to define sign as being inclusive of words (including a personal name), design, letter, numeral, colour, combination of colours or a combination of the foregoing or the shape of goods or their packaging. The concept of being able to be represented graphically necessarily includes images lines or characters and it is a further requirement that such representation be clear, precise, self contained, easily accessible, intelligible, durable and objective. The third prong of the definition offered by the Trademark Act of Jamaica, being the section which speaks to the sign being capable of distinguishing the goods or service of one undertaking from those of another undertaking, is the section which will form the focal point of the ensuing discussion. This third prong speaks to the necessary distinctiveness that will allow a trademark to properly identify the origins of a good or service. Using relevant case law and legislation where appropriate, the discussion should address the principal issue of distinctiveness, how such distinctiveness is acquired and whether or not the ability of a trademark to distinguish items of one undertaking from another necessarily means that it possesses this elusive distinctive characteristic.
Most of the cases, if not all, relevant to trademarks within the intellectual property arena of the law makes reference to a certain distinctiveness which must be a characteristic of any sign that is to be registered as a trademark or that is to maintain its status as the latter. As much is said in the 1989 Directive section 3 where it dictates that a sign is to be prevented from registration if it is “devoid of distinctiveness.” It must be here mentioned that distinctiveness may be derived in a number of ways. According to Nicholas Economides in the New Palgrave dictionary of Economics and Law, a sign may be inherently distinctive in which case the sign qualifies for legal protection as a trademark immediately or it may have derived distinctiveness through use – acquired distinctiveness. According to him, inherently distinctive signs fall into the categories of ‘fanciful’ where the word has no other meaning for example EXON; arbitrary where the context in which the word is used is unprecedented such as APPLE of computers or suggestive. He stipulates however that for a sign that is not inherently distinctive to qualify for legal protection as a trademark, it must have acquired a secondary meaning specific to the goods or services or the origins of such that they are now being taken to refer to. This is substantiated by dicta in the famous Phillips v Remington case. In the latter, the claimant contended that its sign for a three headed electronic shaver was subject to be registered as a trademark because contrary to opposing counsel’s contention that it was devoid of distinctiveness, it was in fact distinct because it had garnered a secondary meaning which associated it with the claimant’s company. The court responded to the claimant’s argument by saying that it had not acquired the requisite distinctiveness for two reasons; the first of which is primarily important – that 1. The words ‘three headed shaver’ had not acquired a meaning specific to the source of the good outside of ordinary usage and 2. That the distinctiveness to which the claimant referred by saying that to the public the sign was only associated with their company was a...
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