Section 6(2) of the Trade Marks Act (Chapter 385) divides the Register into Part A and Part B. Which Part your mark sits in decides how easily it goes on, and how strong it is once it is there.
Part A — the essential particulars
(a) the name of a person represented in a special or particular manner; or
(b) the signature of the applicant or of some predecessor in his business; or
(c) an invented word; or
(d) a word not having a direct reference to the character or quality of the goods, and not being, according to its ordinary meaning, a geographical name or a surname; or
(e) any other distinctive mark.
Section 15(2) closes the gap: a name, signature or word that is 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 geographical name, or a word describing the goods can reach Part A — but only on evidence of acquired distinctiveness.
Part B — capable of becoming distinctive
A trade mark is registrable in Part B if it is distinctive, or is not distinctive but is capable of becoming distinctive, of the goods for which registration is sought and with which the applicant is or may be connected in the course of trade.
That is a materially lower threshold. Part B exists for marks that are suggestive, or descriptive at the margins, or too new to have built a reputation — marks that will earn their distinctiveness through use rather than possessing it at filing.
A mark is not distinctive unless it is adapted to distinguish goods with which the proprietor is or may be connected in the course of trade from goods in respect of which no such connexion subsists. In deciding, regard may be had to (a) how far the mark is inherently adapted to distinguish, and (b) how far, by reason of use or other circumstances, it does distinguish. See distinctiveness.
Part A and Part B side by side
| Part A | Part B | |
|---|---|---|
| Threshold | One of the six essential particulars in s 15(1); otherwise distinctiveness on evidence (s 15(2)) | Distinctive, or capable of becoming distinctive (s 16(1)) |
| Exclusive right | Yes — s 49(1) | Yes — s 49(1), in the same terms |
| Infringement | Section 53(1) | Section 53(1), subject to the s 53(2) defence |
| Defence of “no likely confusion” | Not available | Available (s 53(2)) |
| Presumption of validity | Yes (s 50) | Yes (s 50) |
| Protection after 3 years | Yes — s 51 limits removal for non-registrability under s 15 | No equivalent |
| Conclusive after 10 years | Yes — s 52 | No |
| Duration and renewal | 10 years, renewable (ss 46, 60) | 10 years, renewable |
| Removal for non-use | Section 14 applies | Section 14 applies |
| Can hold both | Yes — s 15(3) | Yes — s 16(2) |
Section 53(2) — the difference that bites
In an action for infringement of a Part B mark (other than infringement by breach of restrictions under section 54), an injunction or other relief shall not be granted if the defendant establishes that his use of the mark complained of is not likely to deceive or cause confusion, or to be taken as indicating a connexion in the course of trade between the registered goods and a person entitled to use the mark.
Note where the burden sits: it is on the defendant. But if he discharges it, the Part B proprietor gets nothing — no injunction, no damages. A Part A proprietor faces no such defence; on proof of a substantially identical or deceptively similar mark used in the course of trade on the registered goods, the case is made out.
Sections 51 and 52 — a Part A mark gets stronger with age
In proceedings relating to a Part A mark instituted more than three years after the date of registration, the mark shall not be removed or held invalid on the ground that it was not registrable under section 15, unless it is proved that it was not, at the commencement of the proceedings, distinctive of the proprietor’s goods.
In proceedings relating to a Part A mark, the original registration shall, after 10 years from the date of original registration, be taken to be valid in all respects, unless it is shown — (a) that it was obtained by fraud; (b) that the mark offends against section 19; or (c) that the mark was not distinctive at the commencement of the proceedings.
A Part B registration never acquires either protection. It remains open to attack on registrability for as long as it stands.
Moving between the two Parts
- Downwards, at the registry. Under section 33(5), where a Part A application would otherwise be refused, the Registrar may — with the applicant’s consent — treat it as an application for Part B and deal with it accordingly. That is usually a better outcome than refusal, because the application keeps its lodgement date.
- Downwards, by the Court. Under section 13(3), the power to order rectification includes power to order the removal of a registration from Part A to Part B.
- Upwards. There is no direct promotion mechanism. A proprietor whose Part B mark has become distinctive through use makes a fresh Part A application, relying on section 15(2) and evidence of use. Sections 15(3) and 16(2) expressly permit the same person to hold the same mark in both Parts, for the same or different goods.
Apply for Part A if the mark is an invented word, a signature, a stylised name, or a word with no direct reference to the goods and which is neither a surname nor a geographical name. Ask for Part B where the mark is suggestive of the goods, is a surname or place name without established reputation, or where you would rather have a registration now than argue for one later. Section 33(5) means an over-ambitious Part A application is not fatal — but only if you consent to the downgrade in time.
Sources
- Trade Marks Act (Chapter 385) — ss 6, 13–19, 33, 46, 49–54, 60
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.