Registrability and validity of registration
9. (1)
In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the
register it must contain or consist of at least one of the following essential particulars (a)
the name of a company, individual, or firm, represented in a special or particular manner;
(b)
the signature of the applicant for registration or some predecessor in his business;
(c)
an invented word or invented words;
(d)
(e)
a word or words having no direct reference to the character or quality of the goods, and not
being according to its ordinary signification a geographical name or a surname;
any other distinctive mark:
Provided that a name, signature or word or words other than such as fall within paragraphs (a) to (d) of
this section, shall not be registrable under paragraph (e) of this section, except upon evidence of its
distinctiveness.
(2)
For the purposes of this section, "distinctive" means adapted, in relation to the goods in respect of
which a trade mark is registered or proposed to be registered, to distinguish goods with which the
proprietor of the trade mark is or may be connected in the course of trade from goods in the case of
which no such connection subsists, either generally or, where the trade mark is registered or
proposed to be registered subject to limitations, in relation to use within the extent of the
registration.
(3)
In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have
regard to the extent to which (a)
(b)
10.
(1)
(2)
the trade mark is inherently adapted to distinguish as aforesaid; and
by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact
adapted to distinguish as aforesaid.
In order for a trade mark to be registrable in Part B of the register, it must be capable, in relation
to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods
with which the proprietor or the trade mark is or may be connected in the course of trade from goods
in the case of which no such connection subsists, either generally or, where the trade mark is
registered or proposed to be registered subject to limitations, in relation to use within the extent of
the registration.
In determining whether a trade mark is capable of distinguishing as aforesaid, the tribunal may
have regard to the extent to which -
(a)
(b)
(3)
the trade mark is inherently capable of distinguishing as aforesaid; and
by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact
capable of distinguishing as aforesaid.
A trade mark may be registered in Part B notwithstanding any registration in Part A in the name of
the same proprietor of the same trade mark or any part or parts thereof.
11.
It shall not be lawful to register as a trade mark or part of a trade mark (a)
(b)
any matter the use of which would, by reason of its being likely to deceive or cause confusion
or otherwise, be disentitled to protection in a court of justice or be contrary to law or morality; or
any scandalous design.