LEGAL PRINCIPLE: INTELLECTUAL PROPERTY LAW — Trade Marks — Distinctiveness as Prerequisite for Protection
PRINCIPLE STATEMENT
An essential element of a device claimed to be a trade mark is that it identify the goods of a particular merchant and distinguish them from the goods of others. A word, symbol, shape or colour serving this purpose is distinctive. Certain marks are inherently distinctive while others acquire distinctiveness over time. Once a trade mark has acquired notoriety to the common knowledge of persons in the trade, it will have acquired the character of distinctiveness.
RATIO DECIDENDI (SOURCE)
Per Tobi, JSC, in Ferodo Limited & Anor v. Ibeto Industries Limited (2004) NLC-951999(SC) at pp. 40–41; Paras E–B.
"An essential element of a device claimed to be a trade mark is that it identify the goods of a particular merchant and distinguish them from the goods of others. A word, symbol, shape or colour serving this purpose is said to be distinctive. Certain marks are inherently distinctive while others only acquire distinctiveness over time. ... Once the trade mark, by frequent use, has acquired a notoriety in the trade to the common knowledge and common and easy identification of persons in the trade, it will be said to have acquired the character of distinctiveness."
EXPLANATION / SCOPE
Distinctiveness is the essential prerequisite for trade mark protection. A mark must identify and distinguish the proprietor’s goods from those of others. Distinctiveness may be inherent (unique from inception) or acquired through extensive use and notoriety in the trade. Without distinctiveness, a mark cannot qualify for registration or protection. The court cannot protect marks that fail to serve this source-identifying function. This serves preventing monopolisation of common or non-distinctive trade features.