Trade mark distinctiveness is a crucial element to consider when creating a strong brand identity for products or services. A strong trade mark has the potential to enhance a company's reputation and sway consumer choices. It is not just the marketing appeal that matters; the level of legal protection afforded to the trade mark is equally as important. Such protection may only be obtained where the trade mark is distinctive hence qualifying for registration pursuant to the provisions of the Trade and Service Marks Act No. 12 of 1986 (as amended) (the Trade Marks Act).
Legal framework and consideration
Trade mark distinctiveness in Tanzania is governed by the Trade Marks Act which essentially sets out the criteria for determining the distinctiveness of a mark. The essence of trade mark distinctiveness is to ensure the ability to distinguish goods or services associated with the proprietor from others in trade or business.
According to section 16 of the Trade Marks Act, a trade or service mark is only eligible for registration if it is distinctive. In order to be distinctive, the mark must have the uniqueness that differentiates it from other goods and services in the course of trade or business. This criterion applies to the goods or services for which the mark is registered or intended to be registered. In cases where limitations are imposed on the registration, the mark's distinctive character must be examined in relation to its use within the scope of its registration.
From a legislation perspective, the Trade and Service Marks Regulations, G.N. No. 40 of 2000 (as amended) (the Trade Marks Regulations) provides the procedure for trade mark registration upon receipt of an application as follows:
Examination
- Under this stage, the application will be examined by the Registrar of Trade and Service Marks (the Registrar) in comparison with existing registered marks as well as pending applications. This stage seeks to ascertain whether there are existing marks or pending applications identical or so nearly resembling with the applied trade mark, to the point of creating a likelihood of deceit or confusion among the general public. Pursuant to regulation 27 of the Trade Marks Regulations, the Registrar may direct that the examination process of an applied trade mark be renewed before acceptance. Under this circumstance, the process of examination will be reapplied to the satisfaction of the Registrar.
Acceptance
- This stage applies where the examination of a mark is complete, and the evidence of use or distinctiveness of a mark is analysed by the Registrar to his or her satisfaction. The Registrar may either accept the application entirely or express their willingness to accept such registration subject to such conditions, amendments, disclaimer, modifications, or limitations as deemed right to impose. Such willingness of the Registrar shall be communicated in writing to the applicant and if there are no objection by the applicant on such directions, the application shall be altered accordingly.
Advertisement
- Under this stage, the application is published in the Trade and Service Marks Journal as an invitation to the public to set forth their objections to the application, if any, within 60 (sixty) days from the date of the advertisement. The advertisement stage normally comes after acceptance by the Registrar, however, there are exceptional circumstances where the Registrar may direct that the advertisement be done prior to acceptance.
When assessing the distinctiveness of a mark, section 16(3) of the Trade Marks Act provides two factors to be considered as expounded below:
- The inherent capability of the mark itself to distinguish goods or services. This means analysing the distinctive nature of the mark based on its inherent qualities, such as its uniqueness, creativity, and originality. Marks that are highly distinctive and not commonly used in the relevant industry are more likely to be considered inherently capable of distinguishing goods or services.
- The actual capability of the mark to distinguish based on its use or any other relevant circumstances.¹ This assessment considers how the mark is used and perceived by consumers in the marketplace. It considers factors such as the mark's reputation, recognition, and association with the goods or services it represents. It is crucial to note that the actual capability of a mark to distinguish may be influenced by various relevant circumstances, such as the mark's widespread use, extensive advertising and promotion, or the mark's association with a well-known brand or company.
In addition to the above, the inclusion of colour limitations, if any, may influence the assessment of a mark's distinctiveness. Colour limitations refer to specific colours that are associated with a mark and play a significant role in its distinctiveness. If a mark relies heavily on a specific colour or combination of colours to distinguish itself in the marketplace, the assessment of its distinctiveness will take into account the uniqueness and impact of such colours.
The significance of distinctiveness in trade mark registration
Distinctiveness plays a pivotal role in trade mark registration, offering several benefits. Firstly, distinctive marks enable consumers to identify and associate specific products or services with a particular source, fostering brand loyalty and trust. Secondly, registering a distinctive mark provides exclusive rights to the owner, affording protection against unauthorised use and safeguarding the goodwill and reputation associated with the mark. Section 14 of the Trade Marks Act, the exclusive right to use a trade mark is acquired through registration, subject to fulfilling the conditions provided in the Trade Marks Act.
The significance of distinctiveness is further emphasised by the provisions of section 32 of the Trade Marks Act, which addresses the infringement of exclusive rights. This section defines various actions that would be considered infringements, such as using a sign identical or resembling a registered mark in a manner likely to deceive or cause confusion to the public. It also prohibits acts that would impair the distinctive character or acquired reputation of the mark.
When registering a distinctive mark, trade mark owners are afforded legal protection and enforcement mechanisms to combat infringement and unauthorised use of their trade marks. This protection helps maintain brand integrity, combat counterfeit products, and preserve the reputation associated with the mark.
Furthermore, distinctiveness in trade mark registration facilitates enhanced market positioning and competitive advantage. A distinctive mark sets a brand apart from competitors, allowing for effective communication of the brand's value proposition and establishing a strong market presence. This differentiation contributes to brand recognition and can be a key factor in attracting consumers and gaining a competitive edge.
Distinctiveness plays a fundamental role in trade mark registration, offering several benefits to trade mark owners. It enables consumer recognition and brand identification, protects the goodwill and reputation associated with the mark, enhances market positioning and competitiveness, and provides legal protection and enforcement mechanisms. Understanding the significance of distinctiveness, businesses can effectively protect their brands, differentiate themselves in the market, and lay the foundation for long-term success.
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