LEGAL PRINCIPLE: INTELLECTUAL PROPERTY LAW — Trade Marks — Essential Features Distinguished from Decorative Embellishments
PRINCIPLE STATEMENT
When a word is used to denote a product and the other features contained are not distinctive, they are merely decorative of the trade mark and not part of it. Graphic design and colouration incapable of distinguishing goods from another undertaking do not form part of the registered trade mark.
RATIO DECIDENDI (SOURCE)
Per Musdapher, JSC, in Ferodo Limited & Anor v. Ibeto Industries Limited (2004) NLC-951999(SC) at pp. 17–19; Paras E–A.
"In my view the graphic design and the colouration as contained in exhibit D are incapable of distinguishing the brake linings or brake pads of one undertaking from the appellants' undertaking. ... As mentioned above, there is nothing distinctive about the colouration and the graphic chequered design to make them part of the registered trade mark. Also as earlier mentioned when a word is used to denote a product and when the other features contained are not distinctive, they are merely decorative of the trade mark and not part of it."
EXPLANATION / SCOPE
Not all features appearing on a registered trade mark form part of the mark for infringement purposes. Where a word is the dominant and distinctive element used to identify the product, other features such as colouration, graphic designs, or geometric patterns that lack distinctiveness are merely decorative embellishments and do not enjoy protection. This serves focusing trade mark protection on genuinely distinctive elements. The court cannot grant monopoly over non-distinctive decorative features common to the trade.