Sourcebook on Intellectual Property Law
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provision limits the grounds on which registration of a trademark which is validly protected in another country party to the convention may be refused. A sign which is not within the definition of trademark in s 1 will be excluded from registration. A trademark is not registrable if it is devoid of any distinctive character. This involves more than considering (as the 1938 Act required) whether the mark is inherently capable of distinguishing the goods or services of the proprietor. Fewer marks will be refused registration on this ground than formerly. Surnames in particular will be more easily registered. A trademark is not registrable if it consists exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of goods or rendering of services, or other characteristics of the goods or services – that is, it is descriptive. The courts have considered descriptiveness many times. See for example TORQ-SET [1959] RPC 344, WELDMESH [1966] RPC 220, ROTOLOK [1968] RPC 227, WHISQUEUR (1948) 66 RPC 105. Trademarks which consist exclusively of signs or indications that have become customary in current language or in the bona fide and established practices of the trade – generic trademarks – will also be excluded from registration. Acquired distinctiveness Prohibited Matter Public policy
