BISHOP STUART UNIVERSITY

FACULTY OF LAW

OUTLINE SIGNS THAT ARE UNREGISTRABLE.

By
MUKAMATUKWATSE LEVIS
S. 1 of the Trademarks Act defines a trademark to mean, a sign or mark or combination of signs
or marks capable of being represented graphically and capable of distinguishing goods or
services of one undertaking from those of another undertaking.
A sign, as used interchangeably with the word “mark” includes any word, symbol, slogan, logo,
sound, smell, colour, brand label, name, signature, letter, numeral or any combination of them.
A trademark is a right granted upon registration by lodging an application to the registrar of the
trademarks who enters it in the trademarks register. In the case of Morison Industries Plc. v
CPL Industries Ltd (2021) LPELR-52981(CA) “what amounts to a 'trade mark' is the mark
that the plaintiff registered as his artistic design or get up logo that distinguishes or gives
character to the product. Such a registered trademark prohibits any other person from using the
same mark or a mark so similar to it as to likely deceive or cause confusion to the user/consumer
of the goods of the proprietor. The objective of these protective provisions is to ensure that no
one other than the registered proprietor of a trademark uses a mark either identical or so nearly
resembling it as to likely deceive or cause confusion in the course of trade relating to the goods
of the proprietor." Therefore a trade mark must be distinctive from other people’s trademarks.
And, S. 2 of the Act establishes the office of the registrar in that, the registrar shall maintain in
his or her office a manual register of trademarks. S. 2(4) is to effect that the register shall be
divided into two parts called Part A and Part B respectively. There is a difference between
section 9 and 10 of the Trademark Act in respect of registration of signs. That is, section 9 and
under part A, the trademark has to be distinctive, and in section 10 and under part B the
trademark must be capable of distinguishing goods and services for which the person registering
is connected to from those he/she isn’t connected to. Therefor under the Act registration is done
under Part A or under Part B of the Register.
Registration under Part A of the Act should consist at least one of the essential requirements as
provided under S.9 of the Act. They include the following;
i) Name of the company, institution or firm represented in a special or particular manner.

ii) The signature of the applicant for registration or some predecessor in his/her business.

iii) An invented word. In the application of Re Fantastic Sam’s Service Mark [1990] RPC
531, the applicant applied to register words “Fantastic Sam’s” in part A claiming it
qualified under section 9(1)(c) of trademarks Act. The Registrar considered the
objection that the word ‘SAM’s’ is a Christian name and a surname and the mark as a
whole is not distinctive. He also noted that the mark consisted of a well-known English
word ‘Fantastic’ and the word ‘Sam’ was a name and could not qualify under sec 9(I) of
trademarks Act as an invented word. The registrar took cognizance of Lord Herschell’s
statement in SOLIO’s case that a combination of two English words does not constitute
invention under sec 9(I) (C) of trademarks Act
iv) Words with no direct reference to the character of goods or services and not being
according to its ordinary signification of a geographical name.
This implies that absence of at least any or one of the above mentioned essential elements, a
sign even of distinctive cannot be registered. Because these elements are very important in
identifying a mark as a trademark for certain goods against other goods.
There are basically two categories in grounds upon registration would not be granted.
a) Absolute grounds.
These are concerned with the objection to distinctiveness and certain public interest objectives
according to S.4(1), s.4(2), 9 and 23. Absolute grounds will usually involve denial of
registration where the registrar has neither the mandate nor discretion to register. For
example, Flags, International symbols and names of international organizations like WIPO,
WTO, East African Community, the 5 rings of the International Olympic Committee
are all non-registrable
a) Relative grounds
Under S.26 & 27 of the Act, relative grounds arise as a result of some other trader or proprietor
has an earlier conflicting interest. Relative grounds would include the questions of; is the mark
confusingly similar? Is there is a likelihood of confusion? Is the mark misleading?
The major difference between these two grounds absolute grounds are not open to waiver to
anybody yet relative grounds are open to such waiver.

Absolute grounds are applicable to three categories of trademarks upon which an objection may
be taken. Simply put, the following signs are unregistrable on basis of ‘absolute objection’;
a) Trademarks which are not distinctive according to Section 4-9(1) and 9(2). In the case of
Kyaninga Royal Cottages Ltd v Kyaninga Estates Ltd Y/A Kyananinga Lodge HC Misc
App No 808/2020, Court Noted that in determining a trademark, one of the elements for
consideration is distinctiveness. It is a requirement for one to register a particular
trademark /name helps to distinguish goods of the trademark owner for the goods.

b) There are trademarks which consist exclusively of signs or indications that may serve in
trade to designate the kind of quality, quantity, intended purposes, value, geographical
origins, time or product of the goods or services under section 9(1)(d). In simple terms
for instance, if it’s about the character of the goods, the sign should not have a direct
reference to such character. This was considered in the case of Coca Cola Export
Corporation v Registrar of TM [1969] EA 677 ] (H/C of Dar-es-Salaam), wherein the
Appellant applied to register the trademark word ‘Splash’ under part A of the Trademark
register in respect of a beverage. The registrar noted that the word splash has a direct
 reference to the character of the beverage. Court noted that in considering the questions
whether a particular word has reference to the character or quality of the goods, the test is
the reaction of a section of public likely to buy or deal with goods in question. Court
found the word ‘Splash’ was not registrable since it had direct reference to the character
or quality of goods.
Therefore if a sign sought to be registered has a direct reference or designation of the
character of the goods or services, then it is unregistrable.

c) The other category is of trademarks which consist exclusively of signs or indications

Therefore, since absolute grounds as seen relate to objection to distinctiveness and certain public
interest objectives, evidence of such distinctiveness may be acquired by an essential part of a
composite mark. And thus it is for the court to assess whether or not distinctiveness has in fact
been acquired on the basis of the criteria illustrated hereunder.
i) The market share by the mark.
ii) How extensive geographically widespread and long standing the use of the mark has
been.
iii) The amount invested by the applicant in promoting the mark.
iv) The proportion of the relevant class of persons who the cause of the mark at issue
identifies the goods as originating from a particular undertaking.
v) Statements from chambers of commerce or other trade and professional associations.

For that reason, the issue to be identified is whether as a result of use of part of a composite
whole or the relevant class of persons perceive the product or service designated exclusively by
the mark applied for as originating from a given undertaking.
It should be noted that the right to register largely depends on whether other traders are likely in
ordinary course of their business and without any improper motive to desire to use the same
mark or some mark nearly resembling it upon or in connection with their own goods.
Moreover, the power of a trademark in monopoly should not be granted where it will require
honest people to look for a defence to an infringement action.

Some marks may be so descriptive or geographical that they cannot be registered even if
distinctive in accordance with S.9(1)(d) for instance a sign that is geographical should also not
mislead the people over where the goods or services came from. In the case of Swissmiss
Trademark 1998 RPC 889, a company with no business in Switzerland could not register
“Swissmiss” for its chocolate products.
This was because it have been construed by the public that the goods originated from
Switzerland yet that was not the case.
The concept of distinctiveness.
This concept is provided under S.9(2)(a) which is to effect that a distinctive mark is one which in
relation to goods under a trademark is adopted to distinguish goods which the trademark owner
is or may be connected to in the course of trade from goods in case of which no connection
subsist. In simple terms, the idea is about the possibility of identifying the goods belonging the
trademark owner from those belong to other persons.
Paragraph (b) of the same provision is to effect that distinctiveness with regard to a trademark
related to services is adopted to distinguish services of the trademark owner from those of other
people.
And according to S.9(3), the issue of “capable of distinguishing” is resolved relative to the goods
or services for which registration is sought. The expression devoid of distinctiveness covers signs
with a potential to become trademarks which need supporting evidence that they are known as
such as per British Sugar v James Robertson 1996 RPC 281.
This also includes signs which are also sir names, image promoting words, letters, numerals,
colours, smells, but, may not apply to slogans.
Sir names and forenames as unregistrable signs. Under S.9(1)(d), the use of names as
trademarks is normally objected to except if represented in a special or particular manner as
provided by the provision. The criteria for distinctiveness of a name is whether it is capable of
distinguishing. And thus when judging the application for a personal name or signature to be
registered as a trademark, the basic issue is to assess the likelihood of the public treating a mark
and its use as an indication of origin rather than merely a person’s name. According to David I.
Bainbridge1 for a sign to be capable of distinguishing goods and services of one undertaking
from another, it must say or be capable of saying on its face that the goods or services come
from, for instance ‘Levis’ rather than ‘Joel’. Therefore if a sir name or forename is not capable of
distinguishing within the interpretation then it cannot be registered.
Under S.25(1)&(2), signs which are identical and resembling those belonging to a different
owner already on the register for the same goods or services, the same description of goods; or,
services or a description of services which are associated with those goods or goods of that
description and vice versa are unregistrable. This matter was handled by court in the case of
Nairobi Java House ltd v Mandela Auto Spares Ltd (Civil Appeal No. 13 of 2015)[2016]

1
David I. Bainbridge, “Intellectual Property”, 6th ed., p.597
UGCommC12 wherein Justice Christopher Madrama Izama scrutinized the decision of the
Registrar for trademarks where the Registrar upheld a trademark application opposition by the
Registration upon which the appeal arose. Court held that the case of association of the word
Java, through use or association to acquire distinctiveness the appellant has been using the mark
in Kenya since 1999 and court is obliged to take this into account. The registrar’s decision was
set aside.
There are other cases of unregistrable signs and they include the following.
Words. There are situations where a motivated business person may wish to use a mark or
variation of it, which is words which promote or advertise the image of the product. For instance,
“the perfectionist” for lady underwear, “Christmas time” for telecommunication devices.
Words which are customary in English speaking countries do not confer on the sign of
distinctive character. It is not wrong to refuse consideration of the alternative objection under the
distinctiveness once it is decided that the sign is devoid of distinctive character. The mark must
be considered as a whole.
Although it was not unusual and lacked a high degree of inventiveness this is not sufficient to
exclude distinctiveness which ultimately depends on the mark’s capacity to distinguish the goods
of one undertaking from those of others.

Colour. The registration of a single colour may cover a wide portion of spectrum. The ability of
colour par se to be distinctive is inconceivable except in exceptional circumstances which may
happen when the goods or services are restricted and a relevant market is specific.
For a colour to be registrable, the sign must be precise and unambiguous as well as durable and
where it is a combination of colours, it must be systematically arranged in a pre-determined and
uniform way.
Smell marks. These are only registrable on strong evidence of recognition as a trademark which
can be graphically represented. It is also necessary to know that the public considers smell as an
indicator which distinguishes the source.
Descriptiveness. S. 9(1) (d) provides for registration of words having no direct reference to the
character or quality of the goods or services. This implies that descriptive words are not
registrable for example words like “day by day” for milk products among others. The trademark
being registered must not describe the product it will be identified with. For example, if Apple
were to sell apples, it would not have been registered. This is because the name of a type of
product cannot be a trademark, because every marker of that product is free to use its name.
Nokia for example, is a well-known trademark for mobile phones, but no one can have
trademark rights to the word telephone.
Geographical origin. Commercially, a viable association between a place and the type of goods
or services may sometime be built up by the use of place name. The association may derive from
physical conditions for the production of raw materials is such as grapes for wine, carrying but
manufacturing process and on established tradition of local craftsmanship. In this may be
protected through the registration of certification or collection marks as per S.13 to S. 15 of the
Act.
With respect to determination of a word to be geographical, one should consider the presumed
understanding of the average consumer of the goods or services in question who is deemed to be
well informed and reasonably observant and circumspect.
Thus where geographical usage is unknown, the word is regarded as invented. Fanciful usage of
place names have been permitted for instance “North Pole Bananas”. The guidelines on the use
of a geographical or descriptive name or term.
i) Where geographical or descriptive name or term is well known such proof of
trademark use as to be long standing and intensive especially where the word has
been used to indicate the geographical origin of the goods in question.
ii) The overall assessment must take into account the promotional expenditure on the
mark.
Customary usage. The restriction of registration of a trademark extends to two situations. Signs
or indications which have become customary;
First in the current language and secondly in the bonafide and established practices of trade.
This formulation is supported by S.24 of the Act which indicates that registration of a trademark
does not affect a bonafide use of a person of any description of a character or quality of his or her
goods or services provided this is not confusing as to amount to infringement within the ambits
of S.36(2)(b) and S.37(2)(b) of the Act.

Public policy and morality. On this, S. 23(1) is clear that the registrar shall not register a
trademark or part of it if the use of it is likely to deceive or would be contrary to morality or any
scandalous design. Examples of signs refused under this include; “baby killer”, “tiny penis”,
“ghost partner” among others. These cannot be registered because they offend public decency
and morality. In the Hallelujah Trademark Application [1976] RPC. 605, Mr Myall stated
that the use of marks consisting of religious names or in relation to clothing can cause sufficient
offence, lead to public complaint and is viewed by a substantial sector of public opinions being
wrong and that each case must be decided on its own merits. He further laid out the 2 tests to
determine whether a mark is contrary to acceptable principles of morality; the general accepted
morals of the time would be offended and the adverse use of the registrar’s discretion
to refuse registration would be warranted if registration would be likely to offend persons who
might be in a minority of the community yet be substantial in number
Deception. Signs that are so likely to deceive are restricted from being registered under S.23(1).
The deception includes public being confused as to the source of the goods or services. However,
there need to be actual deceit or a serious risk that consumers will be deceived. A sign is
misleading or deceptive if it creates an impression about the goods/services which is
not true, it could be a quality or place of origin. They are therefore signs for marks that tell lies or
are misleading in themselves
It is not sufficient that a particular person is no longer associated with a proprietor of a trademark
comprising the person’s name.
Signs that are contrary to law. The registrar is also prohibited from registering signs which are
contrary to law under S23(1) in that, the law is likely to be contravened. For instance the
counterfeiting law. In the case of Techno ltd v Kigalo Investiment 2013 2 EA P.376, the High
Court held that the applicant who applied to expunge the respondent’s mark from the register of
trademarks was an aggrieved person under s.45&46 of the Act as it was the registered owner of
the “Techno” trademark in Hong Kong and it manufactured and dealt in Techno phones in Hong
Kong and Uganda where it had been supplying Techno phones prior to registration of the Techno
mark in Uganda by the Respondent. The court held that the applicant had met all conditions for
removal of the trademark. Additionally, the respondent’s acts amounted to counterfeiting as they
were illegal and contravened provisions of the Trademarks Act.
Non use of trademark. In the even that there is a non-use of a trade mark which was registered,
the Act under S.46 requires that such mark be removed from the register. In the case of Techno
Telecom ltd, court held that the Techno mark was registered by the respondent without bonafide
intention to use the same and there was never any bonafide use.
Shapes. According to S.23, a shape is unregistrable as a trademark relating to goods if it consists
exclusively of a shape that;
i) That results from the nature of the goods themselves.
ii) Of goods that is necessary to obtain a technical result
iii) If it is a shape that gives substantial value to the goods.

In conclusion, there is no doubt that an unregistered mark enjoys some legal protection.
However, such protection cannot be compared to that which a registered trademark enjoys. This
goes without saying that the burden of proof on a proprietor of a registered trademark is not as
heavy as it would have been for an unregistered trademark owner. Thus, it is always advisable to
registered one’s trademark and any other mark associated with it as it guarantees the owner of
such an exclusive right of usage of the registered marks in whatever class it has been registered.