Which Marks May the Registrar Refuse?

Where section 19 prohibits, section 20 of the Trade Marks Act (Chapter 385) gives a discretion. The Registrar may refuse to accept an application containing any of the listed marks — or a mark so nearly resembling one of them as to be likely to be taken for it.

Section 20(1) — the marks that may be refused

What the categories have in common

Three different concerns are at work.

1. Paragraph (a) — false claims of legal status. A mark reading “Registered” or “Patented” asserts a right the applicant may not have. This is the registration-stage counterpart of section 103, which makes it an offence to represent that an unregistered mark is registered, or that a registration covers goods it does not cover.
2. Paragraphs (b), (c) and (d) — royal and official patronage. These are inherited from the pre-Independence scheme and remain in the Act. Paragraph (d) is the broadest: any word, letters or device likely to suggest Royal or Government patronage or authority.
3. Paragraphs (e) and (f) — national, provincial and municipal symbols. The National Flag, Emblem, Motto and Seal, provincial equivalents, and the emblems of cities, towns, local-level governments, statutory bodies and instrumentalities. These are symbols of the State and of public bodies, and are not to become private trading monopolies.

How the discretion is exercised

“May refuse” means the Registrar can also do something short of refusal. In practice that includes:

• Accepting subject to conditions or limitations under section 33(1) — for instance, limiting the mode of use;
• Requiring an amendment under section 33(2)(b) to remove the offending element — subject always to section 33(3), which forbids an amendment that would substantially affect the identity of the mark;
• Requiring a disclaimer under section 23 of any right to the exclusive use of the element concerned; or
• Requiring consent — particularly under paragraphs (d), (e) and (f), where the body whose emblem is depicted may be prepared to consent. Under section 21 the Registrar has an express power to require consent for the name or representation of a living or recently deceased person; for section 20 the consent operates on the discretion rather than as a statutory requirement.

A refusal under section 20 is a refusal to accept, so section 33(7)(b) applies and the applicant may appeal to the National Court. Under section 36, if no appeal succeeds the application lapses.

Section 20(2) — prohibiting use altogether

Two points of detail matter here. First, the power goes beyond registration to use: a regulation under section 20(2) can make it unlawful to use the mark at all, whether or not anyone applies to register it. Second, it carries an express carve-out for marks already registered or already in use in good faith as a trade mark — existing rights are preserved. Section 104(b) allows the regulations to prescribe fines of up to K500.00 for offences against them.

Checking a proposed mark

1. Strip out status words. Remove “Registered”, “Patented”, “Copyright” and anything to the like effect from the mark itself. Use them, accurately, in the packaging text instead — and remember section 103 makes an inaccurate claim an offence.
2. Avoid national and provincial symbols, and devices that come close to them.
3. Avoid suggesting official endorsement. Words such as “National”, “Government” or “Authority” combined with an official-looking device invite a paragraph (d) objection.
4. If you want to use a public body’s emblem, get written consent first — and lodge it with the application.
5. Design around the objection. An amendment that removes the offending element is only available if it does not substantially change the mark, so it is cheaper to settle the design before filing than after.