Section 15 of the Trade Marks Act (Chapter 385) sets the entry requirements for Part A of the Register — the stronger of the two Parts.
Section 15(1) — the essential particulars
(a) the name of a person represented in a special or particular manner; or
(b) the signature of the applicant for registration or of some predecessor in his business; or
(c) an invented word; or
(d) a word (i) not having a direct reference to the character or quality of the goods for which registration is sought, and (ii) not being, according to its ordinary meaning, a geographical name or a surname; or
(e) any other distinctive mark.
The mark needs to satisfy only one of the five. And note the opening words — the mark may contain one of them; it need not consist of it alone. A composite mark qualifies through its qualifying element, though the Registrar may then require a disclaimer under section 23 of the non-distinctive parts.
Each particular, in practice
| Paragraph | What it requires | Where it fails |
|---|---|---|
| (a) Name in a special manner | A personal or company name presented with distinctive typography, styling, device or arrangement — the presentation is the point | A name in ordinary block letters, without special representation |
| (b) Signature | The signature of the applicant, or of a predecessor in his business | Someone else’s signature; see also section 21 |
| (c) Invented word | A word coined for the purpose — not a dictionary word, not a misspelling that conveys the ordinary meaning | A slight variation of a descriptive word that still reads as that word |
| (d) Word with no direct reference | An ordinary word applied to unrelated goods, and not a surname or place name in its ordinary meaning | Words describing what the goods are, do, or are made of; surnames; town, province and country names |
| (e) Any other distinctive mark | Devices, logos, labels, get-up, numerals, letters — judged against section 17 | Marks that are common to the trade or merely decorative |
Paragraph (d) — the one that catches most applications
A word fails paragraph (d) if it has a direct reference to the character or quality of the goods — that is, if it describes them — or if, according to its ordinary meaning, it is a geographical name or a surname. Either is fatal to paragraph (d).
The reasoning is the same in each case. Descriptive words are what every trader in the market needs to describe their own goods; place names are what any trader from that place may honestly want to use; surnames are what anyone bearing that name may honestly use — and section 55(1)(a) and (b) confirms both, by making the good faith use of your own name, or of a description of the character or quality of your goods, non-infringing in any event.
The word is direct. A mark that merely alludes to a quality, or requires a step of imagination to connect it to the goods, is not caught. That is the space in which most successful word marks are chosen — suggestive rather than descriptive. Where a mark falls near the line, Part B is the safer target.
Section 15(2) — the way back in
A name, signature or word not within paragraphs (a) to (d) is not registrable in Part A unless it is, by evidence, shown to be distinctive.
So a surname, a place name or a descriptive word is not permanently excluded from Part A. It gets in on proof that it has in fact come to distinguish the applicant’s goods — the factual limb of section 17(2)(b).
Length and continuity of use, with dated first-use documents. Volume of sales by year and by region. Advertising expenditure and samples of advertisements. Geographic spread across the country. Trade evidence — statements from distributors, retailers and industry bodies that the word is understood in the trade as identifying the applicant. Media coverage. And evidence that competitors do not need the word, or use different words for the same thing.
Section 17(3) adds an important allowance: where the mark was used before the application by another person under the control of, and with the consent and authority of, the applicant, and an application has been made to register that person as a registered user who the Registrar is satisfied will be registered immediately after registration of the mark, the Registrar may treat that person’s use as use by the applicant. A licensor can therefore rely on the licensee’s use to prove distinctiveness.
Passing section 15 is not enough
Section 15 is only the positive test. An application that satisfies it must still clear:
- Section 19 — a mark likely to deceive or cause confusion, contrary to law, scandalous or offensive, or otherwise not entitled to protection in a court of justice, shall not be registered. This is a prohibition, not a discretion.
- Section 20 — the Registrar may refuse marks containing the National Flag, Emblem, Motto or Seal, provincial or municipal emblems, royal devices, the word “Royal”, or words such as “Patent”, “Registered” or “Copyright”.
- Section 21 — consent may be required for the name or representation of a living person, or of one recently dead.
- Section 24 — not registrable if substantially identical with or deceptively similar to an earlier registered or applied-for mark of another person for the same goods or goods of the same description.
- Section 25 — where several persons claim proprietorship, the Registrar may refuse all of them until the Court determines their rights.
Section 15(3) — the same mark in both Parts
A mark may be registered in Part A notwithstanding that the mark, or a part or parts of it, is registered in Part B in the name of the same person, for the same or different goods — and section 16(2) says the converse. So a proprietor may hold a Part B registration for the whole composite mark and a Part A registration for its distinctive core, or hold the mark in Part A for the goods it has been used on and in Part B for goods it is expanding into.
Where a Part A application would otherwise be refused, the Registrar may — with the applicant’s consent — treat it as a Part B application. The lodgement date is preserved. Always give that consent rather than lose the date.
Sources
- Trade Marks Act (Chapter 385) — ss 15–17, 19–21, 23–25, 33, 55, 64
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.