1. Introduction

The fundamental objective of every business is to capture consumer's attention, and trademarks have evolved into essential tools for establishing brand identity. Distinctiveness serves as a foundation upon which the entire framework of trademark protection is built. The distinctiveness of a trademark indicates an exceptional quality of being easily recognizable, distinguishing a specific mark from the multitude of symbols and signs that are available in the market.1

  1. Top of Form

This concept remains a strategic necessity for ensuring success of a brand in the dynamic and competitive marketplace.2

Moreover, distinctiveness is instrumental in safeguarding a brand against the perils of imitation and dilution. A truly distinctive mark stands as a shield, protecting the brand from infringement and ensuring that competitors cannot free-ride on the goodwill and reputation painstakingly built by the original proprietor. This defensive capability is crucial for maintaining the integrity and exclusivity of a brand's identity.3 In a world where brands strive for recognition and distinction, the distinctiveness of a trademark satisfies the established legal requirement and captures the soul of a brand's identity. It is the silent ambassador that speaks volumes about the brand's values, quality, and promise. Therefore, in navigating the dynamic landscape of commerce, brands must actively cultivate and preserve the distinctiveness of their trademarks, recognizing it as a linchpin for enduring success in the ever-evolving marketplace.

  1. What is Distinctiveness?

A mark is said to be distinctive if it tells us about the goods or services it offers and distinguishes such a mark from the other marks present in the stream of commerce. Distinctiveness in the realm of trademarks refers to the capacity of a mark to set a particular product or service apart from others in the marketplace.4 Distinctive trademarks possesses the remarkable capacity to not only identify but also unequivocally distinguish the goods or services associated with one entity from the diverse array of products and services provided by others.

In Re James' Trademark,5 it was held that,

...to be this distinctive, it must be a mark or device of such a kind that in case of infringement it shall be clear that it is being infringed and that the mark is something different from all other marks used in the same class of goods". Also, in Re: Cadbury Brothers Ltd.'s Application,6 it was held that "what is meant by 'distinctive' is that when you see the name your mind immediately refers to the person or company who sold or manufactured the article and to that one person or firm or company alone.

In determining the distinctiveness of a trademark, there is a need to consider whether the mark is inherently distinctive or has acquired distinctiveness through use.7 When a trademark possesses certain characteristics which make it capable of distinguishing from other marks then, such mark is said to have inherent distinctiveness and does not acquire it through use. Also, when a trademark acquires distinctiveness through appropriate use in the market and the relevant consumers start identifying the goods or services it offers just by looking at the brand name and logo, that would amount to acquiring distinctiveness through use. The inherent distinctiveness of a trademark may be divided into the following:

a. Suggestive marks

A suggestive sign signals/hints to its consumers the type and nature of goods or services it provides. It doesn't entirely describe the goods or services but the consumers have to apply their mind and common sense in order to decipher that such sign relates to certain goods or services. When a trademark owner is granted exclusive rights over such a sign, it does not affect fair competition because such a mark is not essentially chosen by a competitor. Thus, registration of such a mark is an easy process. AIRBUS can be seen as a good example of this mark as it is used for airplanes, and equally suggests a connection to the air transportation industry without explicitly describing the products. The word "airbus" implies a focus on aircraft and conveys a sense of air travel.

This example shows the use of suggestive signs as trademarks, where the chosen words or phrases indirectly evoke or suggest characteristics, qualities, or concepts related to the products or services they represent.

b. Invented Marks

A coined or invented mark makes use of words or phrases which has no specific meaning. It rather comes into existence through the use of intellect and only depicts the source of relevant goods or services and not any information about the goods or services. Therefore, it can be said that a coined mark provides the strongest distinctiveness. When such a sign gets registered as a trademark, the trademark holder gets exclusive right over the mark as it is not a sign that a rival would use to denote his goods or services. Google and Toyota are good examples of invented trademarks that possess inherent distinctiveness.

c. Arbitrary marks

An arbitrary mark consists of words or phrases which are totally irrelevant to the goods or services it offers. Such signs are not descriptive in nature as they do not convey the description of the goods or services it provides to its consumers. Granting an exclusive right over such a mark to the trademark owner does not affect fair competition as the competitors would not be willing to use such signs for their brand since these signs are completely irrelevant to the type of goods or services it offers. Thus, it is easy to register such signs as trademarks. Apple and Blackberry are perfect examples of arbitrary marks as they do not directly describe the products they represent. The words "apple" and "blackberry" have no inherent connection to computers or data processors, making them arbitrary and distinctive.

  1. Marks Having no Inherent Distinctiveness.

A mark having no inherent distinctiveness pertains to a descriptive sign that describes goods or services or a name that denotes designated goods or services, or any other sign in which identification of source cannot be done.

a. Descriptive marks

A descriptive sign is one that describes the function, quality, ingredients, or place of origin of goods or services. "Descriptive of goods or services" refers to a sign that is capable of describing the goods or services it offers or is closely related to such description.

If anyone is granted exclusive rights over such signs, it affects fair competition as the competitors belonging to the same trade would be willing to use such signs. They can only be registered as a trademark if it can be proved that such a sign has acquired distinctiveness through use.

A test of descriptiveness is whether the word conveys the characteristics, qualities, functions, or ingredients of a product to one who has never seen it and does not know what it is.8

b. Generic marks or names

A generic mark refers to those marks which are commonly used by businesses to denote their goods or services. Similarly, a generic name refers to those names which are commonly used by businesses to denote their goods or services. Acronyms, shortened words, and common nicknames may be used in a generic name. No one could establish a monopoly over such names or signs as it will have an impact on fair competition as other businesses are likely to use such signs. Hence, such signs do not get registered. To determine whether a trademark has become generic, the test question put forward by Judge Learned Hand in Bayer Co. v. United Drug Co.9 is apt. The question is "What do the buyers understand by the word for whose use the parties are contending?" To provide an answer, if the buyer understands the word to mean the products of that class, then it is said that the trademark is generic, but if the buyer understands the word to mean a brand of the class of product or as pointing to a particular proprietor, then the trademark is still distinctive.

  1. Antacid - As a term describing drugs that neutralize stomach acid, "antacid" is generic and cannot be claimed as an exclusive trademark in the pharmaceutical industry.
  2. Pain Relief - As the term "pain relief" is commonly used to describe drugs or products that alleviate pain, it cannot be exclusively owned as a trademark. Pizza, Hotel, Coffee Shop are equally examples of Generic marks.

4. Some Steps to Be Taken to Avoid Genericide of Marks.

  1. Constant Use and Advertisement: There should be a constant advertisement of the trademark so that the public can easily identify the source of the products. The continued use and renewal of a trademark give notice to the public that the proprietor maintains exclusive rights over the trademark as this would prevent unauthorized use by third parties.
  2. Filing a Notice of Opposition at the Trademark Registry: Where a person applies for registration of a mark that is similar to that of the proprietor, the available remedy to prevent the use of the mark is to file a notice of opposition at the Trademarks Registry to restrain the application from proceeding to registration and have the infringing mark deemed abandoned or rejected by the Trademarks Office.
  3. Using the registered trademark symbol: Trademark holders whenever using their trademark should always indicate that it is a trademark by using disclaimer statements or symbols such as TM or ® for registered trademarks.
  4. Carrying out advertisement Campaigns: Advertising campaigns may also assist in educating consumers on the correct usage of the trademark.
  5. Avoid using the trademark as a noun or verb: A trademark should be used as an adjective alongside a generic word, and never as a verb, a possessive, a noun, or in the plural. For example: 'a FERRARI car' should be used and not simply, 'a FERRARI'.
  6. Vigilant Monitoring: Trademark owners should monitor how their marks are used both on physical and digital platforms. Regular online searches can help identify potential threats to trademark integrity. If the trademark is used in a generic sense, trademark owners should issue cease and desist letters to the infringers and pursue legal action against repeat offenders.
  1. Factors for Determining Distinctiveness.

The distinctiveness of a trademark is determined on the basis of the following factors:

1. The strength of evidence of use

2. The extent to which competitors in the same trade must use the trademark, and

3.The extent to which the consumers of relevant goods or services may be in contact

with the trademark.

6. Registrable Marks.

According to the provisions of the Trade Marks Act,10 a trademark must be registered before the proprietor of the mark can benefit from the protection granted under the law and such mark must be registered in part A and or Part B of the Trademarks register.11 The Part A marks must be distinctive on registration while Part B marks must be capable of distinguishing, that is, distinctiveness acquired through use.

a) Registration Under Part A of the Trade Marks register.

Under the Trade Marks Act, the criteria for the registration of a trademark under Part A of the register is distinctiveness and the Act defines 'distinctive' to mean "adapted, in relation to the goods in respect of which a trademark registered or proposed to be registered, to distinguish goods with which the proprietor of the trademark is or may be connected in the course of trade from goods in the case of which no such connection subsist, 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."12

The Trade Marks Act provides that, for a trademark (other than a certification trademark) to be registrable in Part A of the register it must contain or consist of at least one of the following essential particulars:13

  1. The name of a company, individual or firm, represented in a special or particular manner.
  2. The signature of the applicant for registration or some predecessor in his business.
  3. An inventive word or invented words.
  4. 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 surname.
  5. Any order distinctive mark:

"Provided that a name, signature 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".14

The case of Ferodo Ltd v. Ibeto Industry Ltd15 is illustrative on this point. In that case, the plaintiffs were manufacturers and sellers of the registered trademark FERODO, a brand of brake linings for motor vehicles. They claimed that the design or get-up of packages in which they sell their FERODO brake linings was distinctive to them and their product. They also claimed that they had been in the Nigerian market with their distinctive trademark for a period of over ten years before the suit was taken to court.

The defendant, an indigenous Nigerian company claimed to manufacture and sell brake linings under the brand name of UNION. The plaintiffs claim that the packaging under which the defendant marketed its UNION brake lining was so similar to the plaintiffs' packaging, that it constituted an infringement of the plaintiffs' registered trademark, and that the sale of the defendant's brake lining also amounted to the passing off of the plaintiff's products. The learned trial judge found that there was no infringement of the mark because it was only FERODO that was registered as the plaintiff's trademark and that UNION or UNION SUPA could not amount to an infringement of FERODO. The learned trial judge further in his judgment found that the claim of passing off also failed because the red, black and white colour combinations as claimed by the plaintiffs were not distinctive of them and were common to the trade of brake linings and brake pads. The plaintiffs appealed to the Court of Appeal, which in its judgment affirmed the decision of the trial court and dismissed the plaintiffs' appeal.

The appellants still not satisfied with the judgment of the Court of Appeal further appealed to the Supreme Court. In delivering the lead judgement, Justice Dahiru Musdapaher (J.S.C) drew a comparison to the Woodward Ld. case16 In that case, the plaintiffs who owned a preparation for the relief of gripes in infants had registered the words, 'Gripe Water' in 1876 as an old trademark. The defendants, who were the successors in business of a firm of manufacturing chemists, sold a preparation for gripes which they called 'Gripe Water'. The plaintiffs brought an action against the defendants claiming injunction to restrain them from infringing their registered trademark and also from passing-off.17 It was held that the plaintiffs had failed to establish that the expression "Gripe Water" meant, or had anytime for many years past, referenced their remedy only. The claim for an injunction and passing-off was dismissed.

The learned judge went further to say that the appellants in the Ferodo case did not discharge the burden of proof placed on them by our procedural law after dealing with the exhibits brought forward, the appeal lacked merit and the appellants could not succeed because there were clear differences between the two trademarks. He added that, if the plaintiff's case in Woodward Ld. was dismissed for failure to establish that the expression 'Gripe Water' meant their remedy only, then the appellants appeal must fail.

The Supreme Court subsequently dismissed the appellant's appeal.

Also, in Trebor Nigeria Ltd v. Associated Industries Ltd,18 the Court held inter alia that the trademark of the defendants, a black elephant, was very distinctive of the defendant's goods and did not infringe that of the plaintiffs.

b) Registration Under Part 'B' of the Trade Marks Register.

The Trade Marks Act19 provides that, "for a trademark 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 of the trademark 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"20

Unlike Part A marks, Part B marks does not have to be distinctive when registered. All that is required is that it should be capable of becoming distinctive by virtue of use. The owner of the mark can make a fresh application to register it in Part A as soon as it becomes distinctive. A trademark can be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trademark.21 The difference between the requirement for registration in Part A and registration in Part B is that a mark which can be registered in Part A must be adapted to distinguish, while a mark which can be registered in Part B must be capable of distinguishing.

Seargent, L.J puts it better in the case of Davis v. Sussex Rubber Co.,22 when he held thus:

But so far as this is concerned, the Registrar is directed to accept an application to register in Part B unless he is not satisfied that the mark is capable of distinguishing the goods of the applicant... the applicant doesn't need to prove that the mark has become distinctive; it is sufficient for him to satisfy the Registrar that it is capable of becoming distinctive, a much less strenuous task and one in which the onus lies rather on the opponent than on the applicant.

7. Some Strategies for Enhancing Distinctiveness.

Here are key strategies for fostering and maintaining the distinctiveness of trademarks:

a. Choosing Strong Trademarks:

The foundation of distinctiveness lies in the selection of strong trademarks. Businesses should opt for inherently distinctive elements right from the inception. Coined words or symbols that bear no direct relation to the products or services they represent often possess a higher potential for achieving inherent distinctiveness. This strategic selection sets the stage for a trademark's journey toward recognition and exclusivity.23

b. Consistent Use and Promotion of the mark:

Consistency in the use of a trademark is paramount. Ensure the continuous and widespread utilization of the trademark in connection with associated goods or services. From advertising campaigns to packaging and various promotional materials, consistent visibility reinforces the association between the mark and its offerings. This unwavering presence in the marketplace contributes to the imprinting of the trademark in the minds of consumers.

c. Monitoring and Enforcement:

Vigilance is the cornerstone of maintaining distinctiveness. Regularly monitor the market landscape to swiftly detect any potential infringements or unauthorized use of similar marks. Prompt enforcement of trademark rights through legal channels is crucial in curbing unauthorized usage, thereby preserving the distinctiveness of the mark. This proactive stance safeguards the brand's identity and prevents dilution.


To obtain trademark protection, it is essential to ensure that the mark possesses inherent distinctiveness or has acquired distinctiveness through extensive use. Registering a distinctive trademark not only protects the brand owner's rights but also fosters consumer confidence and brand loyalty. As the marketplace becomes increasingly competitive, understanding and leveraging the distinctiveness of a trademark becomes indispensable in building a strong and recognizable brand identity. To obtain and ensure trademark protection, the trademark used must not be or become, primarily understood by consumers as referring, to the product itself. Trademark genericide is a tragic way of losing a trademark that was borne from the creativity of a proprietor. Once a trademark proprietor observes the breach of any part of his registered trademark: device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof, necessary actions must be taken to preserve the proprietor's exclusive rights.24


1 See, https://www.oppenhuizen.com/what-makes-distinctive/ accessed 30th November 2023.

2 See, https://www.linkedin.com/pulse/what-brand-identity-unraveling-core-your-businesss-persona-bogwasi-u5nke/ accessed 30th November 2023.

3 See, Trademark Distinctiveness And Its Importance | Intellectual Property Law (gleamlaw.com) accessed 30th November 2023.

4 See, https://www.linkedin.com/pulse/trademark-101-understanding-importance-farheen-ansari/ accessed 30th November 2023.

5 (1886)38 Ch 392.

6 (1981)1 Ch 331 at 339.

7 Section 9(2) of the Trade Marks Act Cap T13 Laws of the Federation of Nigeria (LFN), 2004.

8 Le Blume Import Co. v. Coty, 293 F 344, 351 (2nd Cir 1923).

9 272 Fed. 505 (2d Cir. 1921).

10 Section 9 of the Trade Marks Act, Cap T13 Laws of the Federation of Nigeria (LFN), 2004.

11 Section 9(1)-10(1).

12 Section 9(2) of the Trademarks Act, Cap T13 Laws of the Federation of Nigeria (LFN), 2004.

13 Ibid.

14 Section 9(1) (a)-(e).

15 (2004) LCN/3262 (SC).

16 Woodward Ld. V. Boulton Macro Ld & ors., Reports of Patent, Design and Trade Mark Cases, (Journal article) Volume 32, Issue 8, Pages 173–199.

17 See, https://academic.oup.com/rpc/article/32/8/173/1594814 accessed 30th November 2023.

18 (1971) All NLR 468. See also, GB Ollivant & Co. Ltd. v. John Christian & Co. (1925) 6 NLR 102

19 Ibid.

20 Section 10(3) of the Trade Marks Act, Cap T13 Laws of the Federation of Nigeria (LFN), 2004

21 Ibid.

22 (1927) 44 RPC 412.

23 See, https://trademark-registration.com.au/information/distinctiveness-in-a-trade-mark/ accessed 30th November 2023.

24 See, https://spoor.com/top-7-strategies-to-prevent-genericide-of-trade-marks/ accessed on 7th December 2023.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.