Why it’s im­por­tant to care­fully choose a trade­mark

The Star Early Edition - - OPINION&ANALYSIS - Ja­nine Holle­sen

ACKERMANS has been suc­cess­ful in a prece­dent-set­ting trade­mark dis­pute with Tru­worths which was heard by the Supreme Court of Ap­peal. The trade­mark at the cen­tre of the dis­pute was “The Look”. Tru­worths was the owner of trade­mark reg­is­tra­tions for “The Look” in re­la­tion to var­i­ous goods and ser­vices, in­clud­ing cloth­ing. Tru­worths has a hand­ful of shops which op­er­ate un­der the mark “Tru­worths The Look”. No use was ever made of “The Look” on its own.

Ackermans adopted and used the catch­phrase “The Look For Less”, which it used in re­la­tion to the pro­mo­tion and mar­ket­ing of the Ackermans brand as in “Ackermans The Look For Less”.

Re­ly­ing on “The Look” reg­is­tra­tions, Tru­worths sued Ackermans for trade­mark in­fringe­ment, al­leg­ing that its use of “The Look For Less” in­fringed “The Look” trade­mark reg­is­tra­tions.

Tru­worths also al­leged that Ackermans was pass­ing it­self off as Tru­worths.

Ackermans main­tained from the start that “The Look” can never func­tion as a trade­mark and should be struck from the Trade­marks Reg­is­ter.

As a re­sult and as part of its de­fence, Ackermans filed a counter-ap­pli­ca­tion for the can­cel­la­tion of the Tru­worths’ “The Look” trade­mark reg­is­tra­tions on the ba­sis that the mark should never have been reg­is­tered in the first place as it did not qual­ify as a trade­mark.

In or­der for a trade­mark to be reg­is­tered it must be able to dis­tin­guish the goods or ser­vices of a per­son from that of an­other. A trade­mark must ei­ther be in­her­ently dis­tinc­tive at the date of ap­pli­ca­tion or must ac­quire dis­tinc­tive­ness through use.

Re­ly­ing on sec­tions 10(1) and 10(2) of the Trade Marks Act, Ackermans at­tacked “The Look” reg­is­tra­tions on the ba­sis that the mark was not ca­pa­ble of dis­tin­guish­ing and that the term had a com­mon mean­ing in the trade.

Ackermans pro­duced ex­ten­sive and in­con­tro­vert­ible ev­i­dence, which showed that the term “The Look” was used ex­ten­sively by other re­tail­ers, such as Wool­worths, Edgars, Mr Price, Queenspark, Fos­chini and Markhams. A fur­ther fac­tor which was taken into ac­count by the court was that “the look” was in­cluded in a num­ber of English dic­tionar­ies, copies of which were pro­vided to the court by Ackermans in sup­port of its case.

Or­di­nary mean­ing

The court reached the in­eluctable con­clu­sion that in the fash­ion re­tail in­dus­try, the term “the look” car­ries the uni­ver­sal or­di­nary mean­ing of fash­ion­able or trendy clothes or out­fits. It was found that “the look” was not in­her­ently dis­tinc­tive and be­ing a phrase with a generic de­scrip­tive mean­ing in gen­eral use in the in­dus­try it should be struck from the reg­is­ter.

The court fur­ther ac­cepted the ex­ten­sive ev­i­dence placed be­fore it by Ackermans that “the look“con­sisted ex­clu­sively of words that in­di­cate the kind of goods in the trade and are char­ac­ter­is­tic thereof, be­ing fash­ion­able clothes or out­fits. The court ruled that Tru­worths can­not mo­nop­o­lise the words “the look”.

Af­ter the court found that “the look” was not in­her­ently dis­tinc­tive, it then pro­ceeded to the sec­ond phase of the in­quiry as ad­vanced by Tru­worths – did “the look” be­come dis­tinc­tive through use? For this to oc­cur Tru­worths had to show that the av­er­age con­sumer as­so­ci­ated “the look” with Tru­worths. Tru­worths failed to pro­duce a sin­gle piece of in­de­pen­dent ev­i­dence which demon­strated the pub­lic per­cep­tion in the mar­ket place. The court also high­lighted that all use of “the look” was al­ways in con­junc­tion with the known Tru­worths mark. Tru­worths, there­fore, could not over­come this sec­ond part of the in­quiry.

The court or­dered the re­moval of “The Look” reg­is­tra­tions, the re­sult of which is that re­tail­ers can use “the look” in re­la­tion to their oper­a­tions. The re­moval of the reg­is­tra­tions dis­posed of the trade­mark in­fringe­ment claim. It is there­fore im­por­tant to be mind­ful of the na­ture of the trade­mark to be adopted and used in re­la­tion to a busi­ness or prod­uct which will de­ter­mine the scope of pro­tec­tion. A mark should be dis­tinc­tive of the goods and ser­vices, so that it can serve as a badge of ori­gin of the busi­ness or prod­uct. A mark which is de­scrip­tive, ge­o­graph­i­cal or bears a re­sem­blance to the char­ac­ter­is­tics of the goods will not do the job.

Much has been writ­ten about the spec­trum of trade­marks, with the most rec­om­mended form of mark be­ing a fan­ci­ful or made-up word such as Google. Ar­bi­trary words are also favoured, a clas­sic ex­am­ple of which is Ap­ple which has ab­so­lutely no as­so­ci­a­tion with the prod­ucts or ser­vices.

Sug­ges­tive marks could also be con­sid­ered, which are not as im­pact­ful as Google or Ap­ple. They cre­ate an al­lu­sion to the prod­uct to which it is ap­plied. Mi­crosoft comes to mind, which found its ori­gins in the com­bi­na­tion of mi­cro and soft­ware, which en­cap­su­lated Bill Gates’ vi­sion of hav­ing a com­puter in ev­ery home.

De­scrip­tive mark

That be­ing said, it may nonethe­less be tempt­ing to adopt a de­scrip­tive mark. Tak­ing into ac­count the sig­nif­i­cant role trade­marks play in to­day’s world, the fol­low­ing tips could be con­sid­ered in trade mark se­lec­tion:

Avoid de­scrip­tive, generic and ge­o­graph­i­cal marks;

Ar­bi­trary or made-up words are more likely to be evoked by con­sumers, thereby en­sur­ing that your prod­uct stands out from the rest;

Sug­ges­tive marks could be con­sid­ered – bear­ing in mind that on the spec­trum, these marks could have lesser pro­tec­tion;

The mark need not have any as­so­ci­a­tion with the prod­uct or busi­ness – let’s think about Ap­ple be­ing the most valu­able brand on the planet;

If such marks are in use, re­tain all ev­i­dence of use just in case you need to rely on such ev­i­dence at any time in the fu­ture;

Con­sult your trade­mark at­tor­ney who should be well-versed in the na­ture of marks to pro­vide an opin­ion whether the mark can be reg­is­tered;

Ad­vise your at­tor­ney of any doubts which you may have with ref­er­ence to the par­tic­u­lar in­dus­try con­cerned, bear­ing in mind that your at­tor­ney will not nec­es­sar­ily be aware of the gener­i­cisms used in your in­dus­try;

If the mark passes the dis­tinc­tive­ness test, con­duct trade­mark avail­abil­ity searches to see if the mark or a sim­i­lar mark is not al­ready reg­is­tered by an­other per­son;

If avail­able, reg­is­ter the trade­mark as soon as pos­si­ble;

Trade­mark pro­tec­tion is ter­ri­to­rial, so make sure you seek pro­tec­tion in the ter­ri­to­ries in which you use or in­tend to use the mark. Ja­nine Holle­sen is a di­rec­tor of intellectual prop­erty at Werks­mans At­tor­neys.

PHOTO: SIM­PHIWE MBOKAZI

Tru­worths store in Sand­ton. Tru­worths has taken Ackermans to court over an al­leged trade­mark in­fringe­ment for us­ing the term ‘The Look’.

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