Standing Out From The Crowd: Distinctiveness In South African Trade Mark Law

The concept of distinctiveness is a central and often contested feature of trade mark law. As with many provisions within intellectual property frameworks, the statutory requirements relating to distinctiveness have necessitated further judicial interpretation. This article examines how distinctiveness is addressed in the Trade Marks Act 194 of 1993 (the “Act”) and considers key cases that clarify the scope, meaning and practical application of the concept in relation to word marks, geographical indications and shape marks.

What is Distinctiveness?

Distinctiveness is a cornerstone of trade mark protection in South Africa. A mark must be capable of distinguishing one trader’s goods or services from those of another. Importantly, this reflects the need to balance the interests of trade mark owners against the public’s (including other traders’) right to use descriptive language in commerce.

Trade Marks Act

Section 9 of the Act provides the foundational rule relating to distinctiveness. In order to be registrable, a mark must be capable of distinguishing the goods or services of one undertaking from those of another. A mark will be regarded as capable of distinguishing if, at the date of application, it is either inherently distinctive or has acquired distinctiveness as a result of use.

In essence, the provision requires that a mark be assessed in relation to the goods or services for which it is used and that, when considered in that context, it must enable consumers to distinguish those goods or services from those offered by other traders.

Section 10 of the Act sets out the absolute grounds upon which a mark may be refused registration on the basis of non-distinctiveness. In particular, a mark will be unregistrable if it consists exclusively of a sign or indication that serves, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of the relevant goods or services, including the mode or time of production of the goods or the rendering of the services. Marks that consist exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade are likewise excluded from registration.

At its core, the Act seeks to protect consumers from confusion as to the trade origin of goods or services. Section 10 gives effect to this by preventing the registration of marks that do not function as badges of trade origin. Put differently, where a mark merely describes the relevant goods or services, or consists of terms that are commonly used within the trade, it is incapable of distinguishing one trader’s offerings from those of another.

The Fundamental Requirement

The Appellate Division in Brian Boswell Circus (Pty) Ltd v Boswell-Wilkie Circus (Pty) Ltd confirmed that, in the context of passing off, a name or mark must function as a badge of origin. The source need not be identified by name, but the public must nevertheless associate the mark with a single trade source.

Although not formally part of South African law, South African courts and practitioners frequently refer to the Abercrombie spectrum as a useful framework for evaluating the strength and distinctiveness of trade marks.

Fanciful marks are completely invented words with no prior meaning, such as KODAK or EXXON. They are generally regarded as the strongest form of trade marks.

Arbitrary marks use ordinary words in an unrelated context, such as DOVE for soap.

Suggestive marks hint at qualities or characteristics of the product but still require some imagination on the part of the consumer. JAGUAR for motor vehicles is a common example.

Descriptive marks directly describe a characteristic, quality, purpose or feature of the goods or services, such as FULL MILK for milk products. Such marks are generally not registrable unless they have acquired distinctiveness through use.

Generic marks are common terms for the goods or services themselves and can never function as trade marks.

Inherent versus Acquired Distinctiveness

A mark is inherently distinctive where, by its nature, it is arbitrary or unique in relation to the goods or services for which registration is sought. Acquired distinctiveness, by contrast, refers to a mark that was not originally distinctive but has become capable of distinguishing through use in the marketplace.

Descriptive Terms

The European case of Laboratoire Garnier et Cie assisted in clarifying this concept. The mark NATURAL BEAUTY was refused registration because the relevant public would understand the words as describing products intended to preserve or enhance natural beauty. The mark therefore conveyed information about the characteristics of the goods rather than functioning as a badge of trade origin.

However, descriptive marks may acquire distinctiveness over time once consumers primarily associate the term with a particular trade source rather than with the goods or services themselves.

Assessing Distinctiveness

The factors to be considered when assessing the distinctiveness of competing marks were discussed in New Media Publishing. Similar marks may coexist where the respective goods or services are sufficiently different such that confusion is unlikely. Conversely, where similar marks are used in relation to similar goods or services, a likelihood of confusion may arise.

This approach was confirmed in Orange Brand Services Ltd v Account Works Software (Pty) Ltd, where the court held that ORANGEWORKS, used in relation to software, was confusingly similar to ORANGE for similar goods. The court further recognised that even imperfect or initial confusion may be sufficient to support a finding of confusing similarity. Ultimately, the court emphasised that these matters involve a value judgment based on the overall impression created by the marks and the surrounding commercial circumstances.

Geographical Indications

Century City is a well-known commercial and residential development in Cape Town. The name CENTURY CITY was registered as a trade mark at a time when it had no geographical significance. However, by the time the matter reached the Supreme Court of Appeal, the term had acquired a geographical meaning. The mark therefore became vulnerable to removal from the register because it had become primarily descriptive of a geographical location rather than distinctive of a single trade source.

Shapes

In Beecham Group Plc v Triomed (Pty) Ltd, the issue concerned the distinctiveness of a tablet shape as a trade mark. The court held that the oval, bi-convex tablet shape was common within the pharmaceutical industry and therefore lacked inherent distinctiveness. The shape had also not acquired distinctiveness through use because consumers and pharmacists did not associate the shape with a single trade source.

The case demonstrates that shapes serving a primarily functional purpose will generally lack inherent distinctiveness unless they have acquired distinctiveness through use.

The Average Purchaser

In Plascon-Evans Paints v Van Riebeeck Paints, the court provided important guidance regarding the assessment of confusing similarity between trade marks. The enquiry requires a comparison of the competing marks and an assessment of the impression they would create on the average purchaser.

The comparison considers the visual, phonetic and conceptual impressions created by the marks, viewed both side-by-side and separately within their commercial context. Allowance must also be made for imperfect recollection, since consumers generally remember marks by their overall impression rather than by precise detail.

Conclusion

Distinctiveness turns on whether a sign is inherently capable of distinguishing the goods or services of one undertaking from those of another, either by its nature or through acquired use. Descriptive terms, geographical indications, common shapes and customary trade terms are generally excluded from registration where they fail to function as indicators of trade origin.

Determining the likelihood of confusion requires a holistic assessment of the marks, taking into account visual, phonetic and conceptual similarity, together with the relationship between the goods or services and the characteristics of the relevant consumers. The greatest likelihood of confusion generally arises where similar marks are used in relation to similar goods or services.

Ultimately, distinctiveness reflects the fundamental purpose of trade mark law: enabling consumers to identify commercial origin efficiently and reliably while preserving competitors’ ability to use ordinary and descriptive language honestly in trade. As technology and commerce continue to evolve, debates concerning distinctiveness are likely to remain both important and finely balanced.

In the end, the selection of a trade mark involves a careful balancing exercise. A mark should be sufficiently distinctive to function as a valuable commercial asset capable of generating goodwill and brand recognition, while at the same time complying with the requirements of trade mark legislation so that it may be effectively enforced. Even substantial commercial investment in a mark may be undermined if the mark is inherently weak from a legal perspective, rendering enforcement difficult, uncertain, or impractical.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.