A mark has the ability to serve as a unique indicator of source which could have a significant impact on brand owners.
Not all trademarks are invented words. This is usually not a problem – provided that the dictionary meaning of a word or phrase used as a trademark is not descriptive, generic or commonly used in relation to the goods or services identified by that mark. Indeed, the use of meaningful words as trademarks is not only a legal principle, but a familiar concept to consumers who are accustomed to seeing terms such as ‘Apple’, ‘Orange’, ‘Subway’ and ‘Amazon’ used as trading names.
However, it appears that trademarks incorporating words with any kind of dictionary meaning are under threat in several African countries – at least if one takes account of a string of recent decisions holding that a mark’s ordinary meaning may negatively affect its ability to serve as a unique source indicator.
This consideration has also influenced the manner in which competing trademarks are compared and, in some cases, overshadowed the test for determining the likelihood of consumer deception or confusion. This elevation of invented marks has further permeated passing-off claims.
Read the full article here, written for and published by World Trademark Review.
By Christine Strutt, Copyright and Trademark Attorney
