From a preliminary consideration, the Appellant‘s application was for registration in class B. The
criteria for consideration for registration of a trademark in Class B are provided for under section
10 of the Trademarks Act 2010 which provides as follows:
―10. Capability of distinguishing requisite for registration under Part B.
(1) A trademark relating to goods to be registered in Part B of the register shall 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 owner of the trademark is or may be
connected in the course of trade from goods in the case where no connection subsists,
generally or, where the trademark is registered or proposed to be registered subject to
limitations, in relation to the use within the extent of the registration.
(2) A trademark relating to services to be registered in Part B of the register shall be
capable, in relation to services in respect of which it is registered or proposed to be
registered, of distinguishing services with the provision of which the owner of the mark is
or may be connected in the course of business from services with the provision of which
he or she is not so connected generally or, where the trademark 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 trademark is capable of distinguishing goods or services, the
Registrar or court may have regard to the extent to which—
(a) the trademark is inherently capable of distinguishing goods or services; and
(b) by reason of the use of the trademark or of any other circumstances, the
trademark is in fact capable of distinguishing goods or services.
(4) A trademark may be registered in Part B notwithstanding any registration in Part A in
the name of the same owner of the same trademark or a part or parts of the trademark.‖
The head note to section 10 of the Trademarks Act 2010 provides that capability of
distinguishing is a requisite requirement for registration under Part B. It goes on to give the
criteria for considerations whether to register for goods under section 10 (1) and for services