A registered trade mark should not be descriptive of the characteristic of the particular goods or service for which it is registered. But where is the line drawn between what is descriptive and what is not?
A very recent decision of the Intellectual Property Enterprise Court regarding the JUMPSTAR trade mark has (among other matters) helpfully summarised the principles to be applied in a trade mark case to the question of descriptiveness.
In very short form, a couple of the highlights are as follows. It is the objective of the law to ensure that a sign descriptive of a characteristic of the goods or service must be free to be used by all traders of such good or service. A characteristic has been held by the Court to be a property of the goods or service which is easily recognisable by the relevant consumer. It doesn't matter that the mark may have other meanings, if one of its meanings is descriptive, that will be enough.
Furthermore, there must be a direct and specific correlation between the mark and the goods or service so that the relevant consumer immediately perceives the mark as descriptive. The relevant consumer is of course deemed to be reasonably well informed, observant and circumspect and gives the mark appropriate attention.
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.
