Objective grounds of inadmissibility.
Section 103 (1) identifies certain grounds of inadmissibility of marks which are referred to as "objective grounds". They will receive attention in turn.
Shapes or forms
Section 103 (1) (a) of the Act declares that "a mark which consists of shapes or forms imposed by the inherent nature of the goods or services or by their industrial function shall not be registered".
The Act allows the registration of marks consisting of shapes of goods or containersd.4 However, in view of Section 103 (1) (a), a mark consisting of a shape or form imposed by the inherent nature of the goods or services or by their industrial function is not admissible.
A mark serves to distinguish the goods or services of different enterprises. A shape or form imposed by the inherent nature of the goods or services or by their industrial function cannot serve as a mark in that it is incapable of distinguishing the goods or services of different enterprises. Such a mark is, therefore, inherently inadmissible. Only a distinctive shape or form is capable of performing the functions of a mark.
Descriptiveness
A sign or indication, which is descriptive of the goods or services concerned, is not admissible as a mark. Enunciating this principle, section 103 (1) (b) of the Act states that "a mark which consists exclusively of a sign or indication which may serve, in the course of trade, to designate the kind, quality, quantity, intended purpose, value, place of origin or time of production, or of supply, of the goods or services concerned" is not admissible.
Generic signs or indications
In terms of Section 103 (1) (c) of the Act " a mark which consists exclusively of a sign or indication which has become, in the current language or in the bona fide and established practices of trade in Sri Lanka, a customary designation of the goods or services concerned" is not admissible.
Marks incapable of distinguishing the goods or services.
Section 103 (1) (d) provides: "A mark shall not be registered which is incapable of distinguishing the goods or services of one enterprise from those of another enterprise". Moreover, in the interest of traders and consumers nobody should be allowed to monopolize them. However, a mark consisting of such a sign or indication may be admitted if the mark is distinctively designed.
Immoral, scandalous and anti-social marks
Section 103 (1) (e) provides that a mark shall not be registered "which consists of any scandalous design or is contrary to morality or public order or which, in the opinion of the Director General or of any court to which the matter may be referred to, as the case may be, is likely to offend the religious or racial susceptibilities of any community. " It deals with four aspects of inadmissibility of a mark.
- A mark consisting of a scandalous design
This section is applicable to a mark, which exclusively consists of a scandalous design as well as to a mark, which consists of a scandalous design. The determination as to whether the design concerned is scandalous or not always depends on the facts of the particular case.
- A mark contrary to morality
The word "morality" escapes definition, but possesses a wide and variable meaning. The issue as to whether a mark is contrary to morality depends on various and different social and cultural factors as well as the surrounding facts and circumstances of the particular case including the context in which the mark is used, or is proposed to be used. This section also operates in respect of a mark, which exclusively consists of a design contrary to morality as well as of a mark, which consists of a design contrary to morality.
- A mark contrary to public order
The term "public order" does not have a specific and universal meaning. The facts peculiar to the matter in dispute and the existing social and political environment are necessarily important.
- A mark likely to offend the religious or social susceptibilities
In terms of this section, the Director General or the Court has wide discretion in deciding whether or not the mark concerned is likely to offend such susceptibilities. The discretion should be exercised judiciously and with due care to the relevant facts and to the legal principles governing the proper exercise of discretion. This section also operates in respect of a mark, which exclusively consists of a design that is likely to offend the religious or social susceptibilities as well as of a mark, which consists of a design that is likely to offend the religious or social susceptibilities.
Misleading marks
Section 103 (1) (f) states: "A mark shall not be registered which is likely to mislead the trade circles or the public as to the nature., the source, the geographical indication, the manufacturing process, the characteristics, or the suitability for their purposes, of the goods or services concerned". The misleading character of a mark referred to in this section is intrinsic and inherent to the mark itself and differs from the likelihood of misleading the public caused by an identical or similar mark. The issue whether a mark is inherently misleading must be examined in relation to the goods or services for which the registration of the mark is sought. A mark may be misleading in respect of all the goods or services concerned or part of them. If the mark is partially misleading, that is to say., if the mark is misleading in respect of part of the goods or services concerned, it will not be accepted for registration for those goods or services.
Names of individuals or enterprises
The names are registrable as marks. However, Section 103 (1) (g) provides manner the name of an individual or enterprise shall not be registered. The name of an individual or enterprise is therefore qualified for registration as mark only if it is represented in a special or particular manner. This section uses the phrase "the name" and therefore covers the whole name of an individual or enterprise and not part thereof.
Geographical names and surnames
As provided by Section 103 (1) (h), a mark "which is, according to its ordinary signification, a geographical name or a surname" is not registrable as a mark.
- Geographical names
In terms of section 102 (3) of the Act, a geographical name can constitute a valid mark. The operation of this principle is subject to certain qualifications. Section 103 (1) (h) creates one such qualification by providing that a mark, which is, according to its ordinary signification, a geographical name, is inadmissible.
- Surnames
In view of the provisions of Section 103 (1) (h), a mark which is, according to its ordinary signification, a surname is not admissible.
Every trader is entitled to use his surname in trade without any undue restrictions. Thus, the surnames are not generally admissible as marks. The definition given to the phrase "according to its ordinary signification" under the geographical names is equally applicable to the surnames with some additional complications because the surnames are common and usually selected as marks. Each case requires careful scrutiny and examination in the light of its own facts and circumstances to decide whether or not the particular surname is a surname 'according to its ordinary signification'. If the word does not have other signification than that of a surname it can be treated as a surname according to its ordinary signification. Where the surname is common, the establishment of the fact that it is not a surname according to its ordinary signification is harder.
Armorial bearings, flags or other emblems etc.
Section 103 (1) (i) declares that a mark "which reproduces or imitates armorial bearings, flags or other emblems, initials, names or abbreviated names of any State or any inter-governmental international organization or any organization created by an international convention shall not be registered, unless authorized by the competent authority of that State or international organization." A mark of this kind cannot be admitted as it is likely to carry a wrong message that the particular goods or services have a relationship with the State or the organization concerned.
Official signs or hall-marks
Section 103(1) (j) which is analogous to the preceding section provides that a mark "which reproduces or imitates official signs or hall-marks of a State shall not be registered unless authorized by the competent authority of that State." Under the Paris Convention for the Protection of Industrial Property, the member countries can communicate such emblems, signs and hall-marks etc., to one another for necessary protection.
Marks resembling expired, renounced, removed or nullified marks
Section 103 (1) (k) of the Act states: "A mark shall not be registered which resembles in such a way as to be likely to mislead the public, a mark or a collective mark or a certification mark the registration of which has expired and has not been renewed during a period of two years preceding the filing of the application for the registration of the mark in question or where its renunciation, removal or nullity has been recorded in the register during a period of two years preceding the filing of the application for the mark in question
Prohibited trade
Denying the registration of marks in respect of the goods or services trading of which has been prohibited in Sri Lanka, Section 103 (1) (1) states: "A mark shall not be registered the registration of which has been sought in respect of goods or services the trading of which is prohibited in Sri Lanka".
Prescribed words or definitions
In terms of Section 103 (1) (m), a mark "which consists of any other words or definitions as may be prescribed" is admissible. Intellectual Property Regulation No.22 prescribes : "The Director General shall not register any mark which bears the terms or words such as "President", "Prime Minister", "Minister", "State", "Government" or any other word or term of similar meaning which is likely to mislead the public into believing that such mark has state patronage or authorization".
Third Party rights
Section 104 of the Act recognizes six grounds of inadmissibility under one or more of which a mark becomes inadmissible. They are primarily intended to safeguard the rights of third parties. The following discussion concentrates on each of them.
Misleading resemblance to another lawfully filed or registered mark
Section 104 (1) (a) states: "The Director General shall not register a mark which resembles, in such a way as to be likely to mislead the public, a mark already validly filed or registered by a third party, or subsequently filed by a person validly claiming priority, in respect of identical or similar goods or services in connection with which use of such mark may be likely to mislead the public".
Misleading resemblance to a used and unregistered mark
The exclusive rights to a mark can be acquired under the provisions of the Act only by registration. This principle, however, does not indiscriminately trespass upon the interests of the owners of unregistered marks. Section 104 (1) (b) provides. "The Director General shall not register a mark which resembles, in such a way as to be likely to mislead the public, an unregistered mark used earlier in Sri Lanka by a third party in connection with identical or similar goods or services, if the applicant is aware, or could not have been unaware of such use
Misleading resemblance to a used trade name
Section 104(1)(c) provides: "The Director General shall not register a mark which resembles, in such a way as to be likely to mislead the public, a trade name already used in Sri Lanka by a third party, if the applicant is aware, or could not have been unaware, of such use."
This section prevents the registration of a mark which misleadingly resembles a trade name already used in Sri Lanka by a third party. It recognizes the necessity to enhance the protection of the legitimate interests of the purchasing public as well as of the owners of trade names because misleading resemblance of a mark to a trade name can be detrimental to their interests.
Well-known marks or trade names
Section 104(1)(d) which denies the registration of marks in the light of well-known marks and trade names provides: "The Director General shall not register a mark if it is identical with, or misleadingly similar to, or constitutes a translation or transliteration or transcription of a mark or trade name which is well-known in Sri Lanka for identical or similar goods or services of a third party, or such mark or trade name is well-know and registered in Sri Lanka for goods or services which are not identical or similar to those in respect of which the registration is applied for, provided in the latter case the use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark and that the interests of the owner of the well-known mark are likely to be damaged by such use".
Other third party rights and unfair competition
Section 104 (1) (e) declares that the Director General shall not register a mark which infringes other third party rights or is contrary to the provisions of Chapter XXXII of the Act relating to the prevention of unfair competition.
The preceding sections attempt, inter alia, to protect and safeguard third party rights under certain specified circumstances. This section is general and encompasses all the other instances where the third party rights are infringed. An attempt to enumerate such instances is not feasible and practicable due to the diverse and ever-changing nature of trade related activities. It is always a matter for the Court to ascertain and decide, ion the light of the facts of the particular case, whether the third party rights of any kind are infringed or not. The third party rights may include infringement of copyright 62 of a person, violation of a person's right to his name or portrait and trespassing on the right of other enterprises to the legitimate use of a particular sign in the course of trade. This section also prevents the registration of a mark which is contrary to the rules relating to the prevention of acts of unfair competition.
Marks applied for by agents or representatives
Section 104(1)(f) provides: "The Director General shall not register a mark which is filed by the agent or a representative of a third party who is the owner of such mark in another country, without the authorization of such owner, unless the agent or representative justifies his action."
Consent
In the determination of the admissibility of a mark in the light of third party rights, the Director General is required to take into account the fact that the concerned third party has consented to the registration in question. This principle is enunciated by Section 104(3) of the Act which provides; "The Director General shall in applying the provisions of paragraphs (a) to (e) of subsection (1), have regard to the fact that the third parties referred to therein have consented to the registration of such mark."
Trusts
The provisions of Section 105 of the Act prohibit the Director General from receiving any notice of any trust-expressed, implied or constructive. Such notice cannot also be entered in the Registrar of Mark.
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.
