Thus capable of distinguishing means whether the mark

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meaning over. Thus, capable of distinguishing means whether the mark can in fact do the job of distinguishing. So the phrase in section 1(1) adds nothing to section 3(1) at 40 least in relation to any sign within section 3(l)(b)-(d). The scheme is that if a man tenders for registration a sign of this sort without any evidence of distinctiveness then he cannot have it registered unless he can prove it has a distinctive character. That is all. There is no pre-set bar saying no matter how well it is proved that a mark has become a trade mark, it cannot be registered. 45 That is not to say that there are some signs which cannot in practice be registered. But the reason is simply that the applicant will be unable to prove the mark has become a trade mark in practice - "Soap" for "soap" is an example. The bar (no pun intended) will be factual not legal. 50 24 [1966] R.P.C. 541 Downloaded from by Makerere University user on 03 September 2019
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306 Jacob J. British Sugar Pic v. [1996] R.P.C. James Robertson & Sons Ltd. Next, is "Treat" within section 3(l)(b)? What does devoid of any distinctive character mean? I think the phase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark? A 5 meaningless word or a word inappropriate for the goods concerned ("North Pole" for bananas) can clearly do. But a common laudatory word such as "Treat" is, absent use and recognition as a trade mark, in itself (I hesitate to borrow the word from the old Act but the idea is much the same) devoid of any distinctive inherently character. I also think "Treat" falls within section 3(1 )(c) because it is 10 a trade mark which consists exclusively of a sign or indication which may serve in trade to perform a number of the purposes there specified, particularly, to designate the kind, quality and intended purpose of die product. The word probably also falls within section 3(l)(d): it is a sign which has become customary in the current language. Lots of people use "Treat" in advertisements 15 and on goods and I have some examples in evidence. Thus, assuming I am right so far, the question is whether British Sugar have shown that the mark now has a distinctive character. Is my finding that to some but not most people "Treat" has some trade mark significance enough? This 20 depends on what is meant by a distinctive character. Neither the Directive nor Act throw any light on this. So I have to use what I at least regard as my common sense. Take a very descriptive or laudatory word. Suppose the proprietor can educate 10% of the public into recognising the word as his trade mark. Can that really be enough to say it has a distinctive character and so 25 enough to let the proprietor lay claim to the word as a trade mark altogether? The character at this stage is part distinctive but mainly not. I do not think it would be fair to regard the character of the word as distinctive in that state of affairs. But if the matter were the other way round, so that to 90% of people it was taken as a trade mark, then I think it would be fair so to regard it. This all 30 suggests that the question of factual
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  • Fall '19
  • The Land, Makerere University, SONS LTD, James Robertson, Jacob J

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