40 overall there is this further point namely that

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40 Overall there is this further point, namely that recognition is not the same thing as perception as a trade mark - as not only recognising the word but as regarding it, in itself, as denoting the goods of one particular trader. On the question of factual distinctiveness I must also have regard to how the 45 mark is used - how it appears on the label. I think it is fairly ambiguous. What the customer sees is "Silver Spoon Treat". The suggestion is that the syrup from "Silver Spoon" will be a "treat". Other customers may accept the word as having a trade mark meaning in context. I take the latter possibility into account in my conclusion. 50 Downloaded from by Makerere University user on 03 September 2019
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305 [No. 9] Chancery Division Jacob J. Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word "Treat". I do not think this assists the factual inquiry one way or the other, save perhaps to 5 confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in 10 principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark? 4 and the same must be true under the 1994 Act. I disregard the state of the register evidence. In the end I conclude, that whilst it is probably the case that a proportion of 15 members of the relevant public regard the word alone as having some trade mark significance, one cannot say that most do. I think the suggested 60% figure is much too high. Overall the word has achieved some minor degree of distinctiveness in fact, but falls far short of universal or near universal acceptance as a trade mark for ice cream toppings. 20 How stands the law on these findings? I begin by considering the "not a trade mark" point. Section 1(1) has two parts, sign, and capable of distinguishing. Sign is not in issue: a word is plainly included within the meaning of sign as the remainder of section 1 indicates. But what about capable of distinguishing? 25 Does this add any requirement beyond that found in section 3(1)? Section 3(1 )(b) bars the registration of a mark which is devoid of distinctive character unless it has in fact acquired a distinctive character. I cannot see that the closing words of the first sentence of section 1(1) add anything to this. If a mark on its face is non-distinctive (and ordinary descriptive and laudatory words fall 30 into this class) but is shown to have a distinctive character in fact then it must be capable of distinguishing. Under section 10 of the old Act, for a mark to be registrable in Part B, it also had to be capable of distinguishing. But the Pickwickian position was that some marks, even though 100% distinctive in fact, were not regarded as capable of distinguishing within the meaning of that 35 provision. I do not think the Directive and the 1994 Act take this more limited meaning over.
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  • Fall '19
  • The Land, Makerere University, SONS LTD, James Robertson, Jacob J

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