UNIVERSITY OF BOTSWANA

DEPARTMENT OF LAW
LAW 541: INTELLECTUAL PROPERTY LAW II 2022
LECTURER: DR J. PFUMORODZE
LAW OF TRADEMARKS
REGISTRABLE AND NON-REGISTRABLE TRADE
MARKS; DEALING IN TRADEMARKS
1. DEFINITION
A trademark is defined as “Any sign, or any combination of signs, capable of distinguishing the
goods or services of one undertaking from those of other undertakings” as stated under Article 15
of the Trips Agreement1.
For purposes of our law a ‘mark’ is defined as “any visible sign capable of distinguishing the goods
or services of an enterprise” as per the Industrial Property Act, 2010.2

2. RIGHT TO APPLY
The right to apply for a trademark concerns the pre-requisite criteria that must exist to enable the
application for the registration of a trademark. The right to apply for a trademark is underscored
under three sources of law;
1. International Conventions
2. Common Law
3. Statute

2.1 International Conventions

The right to apply for a trademark is recognized under two international conventions, namely;
1. Under Article 15 paragraph 1 of the Trade Related Aspects of Intellectual Aspects
Property Rights Agreement (TRIPS Agreement), which states that;

“Any sign, or any combination of signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings, shall be capable of constituting a trademark. Such
signs, in particular words including personal names, letters, numerals, figurative elements and
combinations of colors as well as any combination of such signs, shall be eligible for registration
as trademarks.”

The provision in essence provides that any sign constituting a trademark may be capable of
registration. Such sign may include personal names, letters, numerals or colors. Therefore, for a
right to apply for a trademark to exist there must first be a trademark consisting of a sign capable
of distinguishing goods.

1
Trade Related Aspects of Intellectual Aspects Property Rights Agreement, TRIPS
2
Laws of Botswana
For instance, in the case of Cadbury Ltd v Beacon Sweets & Chocolates (Pty) Ltd.3 In this case,
application was made for registration of “the color purple” in relation to labels or packaging for
chocolate. A representation of the color accompanied the application. Spoelstra J held that a colour
can only constitute a sign or a mark if it is used in a proper context. Further that if a color is
represented visually by means of images, lines or characters so as it a can be precisely identified
then it may constitute a ‘mark’. The Court found that since the color was a mark the applicants had
a right to apply for its registration.

2. Article 4 of the Paris Convention4 provides as follows;

“(1) Any person who has duly filed an application for a patent, or for the registration of a
utility model, or of an industrial design, or of a trademark, in one of the countries of the Union,
or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of
priority during the periods hereinafter fixed.
(2) Any filing that is equivalent to a regular national filing under the domestic legislation of
any country of the Union or under bilateral or multilateral treaties concluded between countries
of the Union shall be recognized as giving rise to the right of priority.
(3) By a regular national filing is meant any filing that is adequate to establish the date on
which the application was filed in the country concerned, whatever may be the subsequent fate
of the application.”

The Paris Convention identifies the right to apply for a trademark where it has been registered
elsewhere in one of the countries in the union, thus highlighting the right to priority.

2.2 Common Law

Under common law two instances occur that would entitle a person to apply for a trademark,
being;
1. Usage
2. Claim of proprietorship and intention of use

2.2.1 Usage

3
2004 BIP 74 (RTM)
4
Paris Convention
A trademark can be acquired by usage under common law. Where a proprietor has been using the
mark previously he acquires the right for its registration.
North Shore Toy Company Limited v Charles L. Stevenson Ltd5
There was a partnership adopting the trade mark ‘lul-a-bye’ which made toys and the respondent
was the sole distributor of such toys. The partnership terminated, and the remaining partner bought
out the remaining partner and incorporated the applicant. Relations between the Applicant and the
Respondent broke down over the distribution of the toys. Respondent stopped ordering toys from
Applicant and warned them against using the trademark ‘lul-a-bye’ as the respondent had applied
for a trademark under the name ‘lullaby’. Applicant sought an order rectifying the register by
removing the registered mark.
It was held that a trademark can be acquired by use. Further that a common law trademark can be
lost by failure of the proprietor to use it. Further that a common law trademark is assignable only
to the goodwill of the business in which it is used. The Respondent had not become the owner of
the trademark as user of the mark as a distributer and judgment was made in favor of the Applicant.

2.2.2 Proprietorship and Intention to Use Mark

The second instance is that a proprietor of a mark must claim to be the proprietor of a mark as and
must intend to use the mark.
Application by Brown Shoe Company Inc.6
It was held that
“It is incumbent on an applicant for registration of a trade mark which has not yet been used in
trade to assert that it is proposed to be used by him and that he claims to be the proprietor 25
thereof. If there is an owner of a similar trade mark who has made an earlier assertion of
proprietorship and who has not abandoned that claim, then the claim of the applicant is not well
founded and the application should not be allowed to go forward”

In Pussy Galore TM7 it was interpreted that the intention to be used meant to include the
proprietor himself or by his servant or agent whose actions would in law be regarded as his own,
and not proposed to be used by someone else merely under the control of the proprietor.
The intention to use the mark is quite contingent on an event which the applicant cannot control.

5
[1974] RPC
6
[1959] RPC 29
7
[1967] RPC 265
Rawhide T.M8
The Applicants registration was refused on the basis that the applicants did not have a sufficiently
present and unconditional intention to use the mark to bring themselves within Section 17(1) of
the Trade Marks Act. The Court held that
“The fact that the reason why a manufacturer chooses as a trade mark a name which it is open to
him to choose is that he hopes thereby to gain the benefit of publicity for which he will not have to
pay cannot of itself be a good ground for refusing his application”
It was also held further that;
“It is one thing to say that a man who is using or proposes here and now to use a mark on his
goods is entitled to be registered notwithstanding that his reason for choosing that mark is the
hope of getting the benefit of publicity for which he has not paid, but it is quite another thing to
say that a man can put himself in the position of reaping the advantage of any publicity which may
subsequently attach to the name though he has no intention of making any substantial use of the
mark unless and until it is clear that publicity will attach to it.”

2.3 Statute Law

Locally the right of application is recognized under Section 74 (1) of the Act9 which states that;
“The exclusive right to a mark under this Act shall be acquired by registration in accordance with
the provisions under this Part”
Therefore, for one to have a right to apply for a trademark they must with the provisions under
Part 8 of the Act by registering such mark.
Section 7510 of the Act also provides for the right to register a trademark where it has been acquired
by use in good faith as it provides that;
“Where a mark has been registered in good faith, or where rights in the mark have been acquired
through use in good faith either before 1st January, 2000, or before the geographical indication is
protected in Botswana, nothing in this Act shall prevent the registration of such mark or interfere
with the use of such mark on the basis that the mark is identical to, or similar to, a geographical
indication.”

8
[1962] RPC 133
9
Industrial Property Act, 2010
10
Supra
3. REGISTRABLE MARKS
To be registrable a mark must generally satisfy two criteria, being;
1. It must fall within the definition of a trademark/mark under Section 2 of the Intellectual
Property Act, 2010.
2. It must not fail on the grounds of refusal (restrictions on registration of trademarks).11
1. The definition of a trade mark
The definition as given earlier, gives two general features that a mark must possess for it to be
registrable;
a) It must be a visible sign
b) It must distinctive
a) A visible sign
The definition of a sign is quite far-reaching, as Jacob J put it in Philips Electronics
NV v Remington Consumer Products Ltd “I think a ‘sign’ is anything which can
convey information. I appreciate that this is extremely wide, but I can see no reason
to limit the meaning of the word. The only qualification expressed in the Directive
is that it be capable of being represented graphically ...”. The requirement for a
graphical representation can be witnessed by the requirement that reproductions of
the mark be attached to the application. It is also recognized that the thing/product
itself cannot be a sign but the drawing of that thing may be a sign.
Examples;
Colour
Provided that the colour or a combination of colours is distinctive and it is precisely
defined it is registrable under as a mark.
Shapes
Shapes are registrable if they are distinctive and adhere to Section 76(2)(f) and other
restrictions.
b) Distinctiveness
Distinctive Character (Section 74(2)(a))

For a mark to be registered it should be distinctive or capable of distinguishing the

goods and services of one enterprise from another’s. This stems from the general
definition of a mark in that it must be capable of distinguishing the goods and
services of one enterprise from another’s.

11
C Colston, Principles of Intellectual Property Law, 1999, 1st Edition, London, UK, Cavendish Publishing Limited,
pp. 350
 This section is clear as to what is impermissible. It is clear that a mark will not be
registered if it is similar to an already existing registered mark.

The question then what amounts to ‘similar’ or, what amounts factors are taken into
amount to determine if the marks are distinguishable. This issue was touched upon
in the British Sugar case.

In Elvis Presley Trade Marks R.P.C 567 CA the judge had occasion to state what
distinctiveness is all about. The court in that case stated:

“the test as explained in Pianotist Co’s Application (1906) 23 R.P.C and

Smith, Hayden & Co Application (1946) 63 R.P.C 97 is whether if the two
rival marks are used in a fair and normal manner, the court is satisfied that
there is no reasonable likelihood of deception or confusion being caused to
a substantial numbers of members of the public.

The court further stated:

“For this purpose the public is to be regarded as ordinary persons, neither

especially careful nor especially careless, who would be in the market as
possible purchaser of the goods in question. The Burden of proof is on the
applicant for the later registration” 12

The court in Canon Kabushiki Kaisha v Metro-Goldwyn Meyer [1998] E.C.R I-

5507 expounded further on the test of proving distinctiveness by stating that “…the
more distinctive the earlier mark, the greater the risk of confusion. Since protection
of a trade mark depends…on there being a likelihood of confusion, marks with a
high distinctive character, either per se or because of the reputation they possess on
the market, enjoy broader protection than marks with a less distinctive character’

This was to say, there may be other factors in every case which may affect how
distinctive a mark is and thus this will affect the probability in which a mark may
be confused. There is a poverty of case law in Botswana with regard to section 74.

12
This decision has been endorsed in subsequent case. Refer to: Philips Electronics NV v Remington Consumer
products Ltd [2002] E.C.R 1-5475 ECJ; Sabel BV v Puma AG [1997] E.C.R I-6191.
 This sub section is not exempted. However, there has been a quasi-judicial
pronouncement which is not binding on the courts, but still holds persuasive power
in that the holding of the case was in line with international standards of
interpretation and Botswana international obligations.13

The pronouncement started by laying down the general principle that:

“The Cinderella of the test for trademark registrability is whether the trademark
applied for is likely to cause an appreciable number of consumers to be confused
about the source, affiliation or sponsorship of goods / services of the trademark
application. Does the use create likelihood that consumers will associate the
Applicant’s goods or services with that of the Opponents? Does the use create a
likelihood that consumers will associate the applicant’s goods or endorsed by or
otherwise affiliated with the Opponent? If so, the applicant’s mark infringes the
opponent’s.”

The registrar was also alive to the fact that the act was silent on the test espoused
above, that is, whether the public will be confused. Nonetheless, the Registrar
considered it to be an appropriate test. Further, it must be pointed out that the act
being interpreted was the 1996 one and not the 2010 one. However, as the
provisions are similar, the arguments and holdings therein are still persuasive.

In determining the issue stated above, it becomes necessary to lay down various
principles and rationales. Therefore, it is important to note the following:

1. Marks may be similar in three respects, namely; visually, phonetically or

conceptually. The most important, according to the Zambian Supreme
Court, is visual. Ngulube CJ had the following to say when addressing the
question of confusing similarity in Trade Kings Ltd v Unilever and Others,
SCZ Judgment No.2 of 2000 ZLR at page 20 ‘…it is obvious that the
judgment of the eyesight is a most important, if not the most important

13
Kaane American International Tobacco Company v Rothmans Of Pall Mall London Limited, the decision made by
the Registrar of Trademarks, Patents and Designs for the Republic of Botswana passed on the 19 th January 2012.
 element in its determination, so much so that, there are many cases in which
it practically determines the case’. This is still the position in Zambia.

2. A trademark distinguishes goods originating from one source from identical

or similar goods from other sources, the sources being the various
enterprises that manufacture or offer such goods. According to Lord
Diplock in Smithkline and French Laboratories Ltd v Sterling- Winthrop
Group Ltd (1975) 2 ALL ER at page 583 trademarks, in their origin, were
marks applied to goods by their makers so that a buyer, by visual
examination of such goods, could tell who made them. He cited the maker’s
marks on silver and gold plates among the earliest examples. Evidently,
trademarks are critical to fair competition and the general smooth
functioning of market economies.

3. What a court is required to do is to notionally transport ourselves to the

market place. In this regard, see the remarks of Colman J in Laboratoire
Lacharte SA v Armour Dial Incorporated 1976 (2) SA 744 T at 746 (D) and
consider whether the average consumer is likely to be deceived or confused.

4. The doctrine of notional transportation means that comparison of

trademarks must not be confined to a viewing of the marks side by side or
having regard to pictures and physical specimens as the approach in Weber
Stephen Products Co v Alrite Engineering (Pty) Ltd 1992 (2) 489. In terms
of this doctrine, a court must place itself in the market place and try and
envision the marks as they will be seen, in both their fair and normal
commercial use, by hypothetical consumers.

5. This is to say, the court must place themselves in the shoes of a consumer
who is in the shop. This entails factors such as, are the products sold in the
side by side in the shop, are the substitutes of each other etc. therefore, the
position is settled at common law that all factors surrounding the purchase
 of a product should be taken into account. The Zambian Supreme Court in
Trade Kings Ltd v Unilever and Others, SCZ Judgment No.2 of 2000 ZLR
at page 21, Ngulube CJ, said:

“..it is necessary to consider the nature of the article sold, the class of
customers who buy, to remember that it is a question of likelihood of
deceiving the average customer of the class which buys, neither those too
clever, nor fools; neither those over careful, nor those over careless….but
the ultimate decision must be come to, having regard to all considerations,
as a matter of judgement on a question of fact”

6. This was the holding in British Sugar Plc v James Robertson and Sons
(1996) RPC 281, Jacob J summarised factors to be taken in assessing
confusing similarity as being the users, physical nature of the respective
goods, the trade channels through which they are marked, the respective
locations where the goods are sold in the supermarket and whether the
products are rivals in the same market. The import of this authority is that
determination of likelihood of confusion is a question of fact.

7. It is also necessary determine whom the courts refer to when they say
‘consumer’. In this regard what constitutes an “average consumer” is
dependent on the product and the relevant consuming public. For instance,
an “average consumer” for advanced engineering products is arguably more
sophisticated than foodstuffs. Further, regarding the manner consumers go
about purchasing a product, it is settled that account should be taken of the
fact that a consumer has imperfect recollection, has no time to critically
compare the various trademarks and the fact that he or she may
mispronounce a mark thereby probably also confusing the seller. The above
analysis is termed “global appreciation”.
 This subsection is thus concluded that, a mark will not be registered
if it similar to an existing mark. What amounts to similarity is a
question of fact which enjoins a court embark on an exercise
determines if the marks are similar basing its conclusion of the facts
of each case.

4. RESTRICTIONS ON REGISTRATION OF TRADEMARKS

These are contained under Section 74(2) of the Intellectual Property Act (IPA) which
states;
(2) A mark shall not be registered if it is —
(a)incapable of distinguishing the goods or services of one enterprise or business from
those of another enterprise or business;
(b)contrary to public order or morality;
(c)likely to mislead the public or trade circles, in particular as regards the geographical
origin of the goods or services concerned, or their nature or characteristics;
(d)a mark that consists exclusively of a sign or indication which may serve in trade to
designate the kind, quality, quantity, intended purpose, value, geographical origin or the
time of production of the goods or of rendering of the service, or other characteristics of
the goods or service;
(e)a mark that consists exclusively of a sign or indication which has become customary in
the current language or in the bona fide and established practices of the trade in respect of
the goods or services for which it is to be registered;
(f)a sign that consists exclusively of —
(i)the shape which results from the nature of the goods themselves,
(ii)the shape of goods which is necessary to obtain a technical result, or
(iii) the shape which gives substantial inherent value to the goods;
(g)identical to, or is an imitation of, or contains, as an element, an armorial bearing, flag or
other emblem, a name, abbreviation or initials of, or official sign or hallmark adopted by,
any State, intergovernmental organization or organisation created by an international
convention, unless the competent authority of that State or organization has given
authorisation for such bearing, flag, emblem, name, abbreviation or initials, official sign or
hallmark to be used by an applicant for a registered mark;
(h)identical to, or confusingly similar to, or constitutes an imitation, a translation or a
transliteration of, a mark or trade name which is well known in Botswana for identical or
similar goods or services of another enterprise, or if it is well known in Botswana for goods
 or services which are not identical or similar to those in respect of which registration is
applied for;
(i)identical to, confusingly similar to, or constitutes a translation or a transliteration of a
geographical indication used to designate or distinguish the same goods for which the mark
is to be used, or to designate different goods where the use of that mark would pose a risk
of misleading the public as to the origin of the goods or services designated by the mark;
or
(j)identical to a mark belonging to a different owner of a registered mark and already on
the register, or with an earlier filing or priority date, in respect of the same goods or services
or closely related goods or services, or if it so nearly resembles such a mark as to be likely
to deceive or cause confusion.
These provisions encompass what are absolute and relative grounds for refusal or invalidity
under English law.
4.1 Absolute Grounds of Refusal of Registration
The absolute grounds for refusal of registration require compliance with the basic meaning
of a mark under Section 2 of the IPA(“mark” means any visible sign capable of
distinguishing the goods or services of an enterprise, “collective mark” means any
visible sign belonging to a collective owner and capable of distinguishing the origin or
other common characteristic, including the quality, of goods or services of different
enterprises which use the sign subject to the control of that owner) (i.e. anything that
isn’t a mark as of fact can’t be registered as such), thus any sign up for registration that
does not conform to the definition will be refused registration. These grounds include;
1. Contrary to Public Order or Morality (Section 74(2)(b))
Marks deemed to be contrary to public order or morality cannot be registered.
This ground is relatively rarely raised. Older authorities suggested that the standard to
be applied when considering what is contrary to public order or morality is in the
context of the generally accepted views and vulnerabilities of today14 with the registrar
is expected to take into account not merely the general taste of the time but also of
minorities that may be regarded as old fashioned, if the registrar is of the opinion that
the feelings or susceptibilities of such person will be offended.15 More recent
authorities suggest that the test aforementioned may be too restrictive.16 Suggesting
that the test should rather be more objective thus being whether accepted principles of
morality are contravened by the mark. These being standards of conduct widely shared
by society. Registration would be refused where it is plain that an accepted principle of
morality is being offended against wherein mere offence to a section of the public, in

14 Hallelujah Trademark 1976 RPC 605

15 La Marquise Footwear Inc.’s Application 1946 RPC 27
 the sense that that section of the public would consider the mark distasteful, is not
enough to justify refusal. As to what level of offence is required for refusal, each case
on its own facts, from the viewpoint of a objective right thinking members of the public,
with the dividing line being drawn between offence which amounts only to distaste and
offence which would justifiably cause outrage or would be the subject of justifiable
censure as being likely significantly to undermine current religious, family or social
values. The outrage or censure must be amongst an identifiable section of the public
and a higher degree of outrage or censure amongst a small section of the community
will no doubt suffice just as lesser outrage or censure amongst a more widespread
section of the public will also suffice.17
2. Deceptive Marks (Section 74(2)(c))
A mark will not be registered if it is of such a nature as to deceive the public as to its
nature, quality or geographical origin of the goods or service. The test here is whether
or not a substantial proportion of the public would be misled into thinking that the
goods or services are those of another trader, are from a certain geographical origin or
are of a particular nature or contain certain characteristics. Further it isn’t necessary to
prove injury to the objectors, what must simply be proved is that the proposed mark
was likely to cause confusion in the public.18
Examples;
Deception in terms of the identity of the Trader-Bali’s Trademark 1969 RPC 472
Bali and Berlei- where both parties were brassiere manufacturers.
Deception in terms of Geographical Origin- Consorzio per la tutela del formaggio
Gorgonzola v Käiserei Champignon Hofmeister GmbH & Co KG 1999 ECR I-1301
Cambozola-cheese from Germany and Austria and Gorgonzola-cheese from Italy
Deception as to the Nature of the Good-Orwoola’s Trademark Application 1910 1 Ch
130
Orwoola being a misspelt way of saying “All wool” deemed to be deceptive in
describing products which weren’t made of all wool.
See also China Therm Trademark 1980 FSR 21
3. Descriptive Marks (Section 74(2)(d))
A mark that consists exclusively of a sign or indication which may serve in trade
to designate the kind, quality, quantity, intended purpose, value, geographical
origin or the time of production of the goods or of rendering of the service, or other
characteristics of the goods or service

17 Ghazilian’s Trademark 2002 RPC 628

18 Bali’s Trademark 1969 RPC 472
Thus, this section excludes marks which describe the goods or services which it
seeks to attach to. A mark is descriptive if, as a whole, one of its possible meanings
is capable of designating a characteristic of the goods or services.
In OHIM v Wm. Wrigley Jr. Company [2004] R.P.C (18) 327 ECJ where the mark in
question was ‘DOUBLEMINT’, the ECJ confirmed that it is not necessary that the
relevant sign is actually being used as a description before an objection based on
descriptiveness can be raised. Further, it does not matter if a term has several
possible meanings, as long as one of its possible meanings is descriptive (for
example, in that case, the combination of “double” and “mint” could mean either
that the goods contained twice the amount of mint or it could mean that the goods
contain two different kinds of mint). If, at least one of the possible meanings of the
relevant trade mark was capable of designating a characteristic of the relevant
goods or services, the sign or indication shall not be registered.
Mitsubishi HiTec Paper Bielefeld GmbH v OHIM (Case T-331/99) for GIROFORM in
relation to printed matter – those two words, used together, therefore designate, in
financial institution circles, a printed form relating to bank payment transactions
for debiting a customer’s account. There is also evidence to show the current usage
of the word with that meaning (Electronic giro forms, Bank giro forms, Giro Form,
Giro application form, Giro form). The sign tells consumers of the intended
purpose of the product. The fact that the product in respect of which registration
of the trade mark was applied for can be used to print other sorts of forms does not
make the mark any more registrable.
Deutsche Krankenversicherung AG (DKV) v OHIM (Case T-359/99) for EUROHEALTH
in relation to insurance services – the word “EuroHealth” allows the relevant
section of the public to establish immediately and without further reflection a
definite and direct association with the health insurance services which fall within
the category of insurance referred to in the application in question. In the present
case, the relevant section of the public is deemed to be the average, reasonably well-
informed and reasonably observant and circumspect English-speaking consumer
of insurance services.
Therefore, if a party seeks to register a trade mark, it must not be descriptive of the
good or service, that is, it must be not described the good or service in relation to
kind, quality, quantity, intended purpose, value, geographical origin. It has been
said that this provision serves a public policy aim by refusing to register such
trademarks, in that such mark may be freely used by all.
For example, if an apple seller registers a trade mark ‘apple’, it means that other
apple seller won’t be able to use the word apple on their packages which will be
bizzare. If we take a better example in relation to geographical location in terms of
case law, it has been said this rule pursues an aim which, in the public interest,
prevents registration of a sign or indication which may serve to designate the
 geographic origin of the categories of goods in relation to which registration of the
mark is applied for. The public interest is to prevent a geographic place name from
being reserved to one undertaking alone:
“…not least because they may be an indication of the quality and other
characteristics of the categories of goods concerned, and may also, in various ways,
influence consumer tastes by, for instance, associating the goods with a place that
may give rise to a favourable response.”19
In this regard, a test has been established. The whether the word at issue was
capable of being used by other economic operators to designate a characteristic of
theirs goods and services.20
4. Specially Protected Emblems or Insignia (Section 74(2)(g))
The registration of marks that contain certain marks that are identical, are an imitation
of or contain certain armorial bearings, flags or other emblems, names, etc. adopted by
States, inter-governmental organisations or International bodies created by conventions
is prohibited unless the said body has authorized the use of such sign as a registered
mark.
4.2 Relative Grounds for Appeal
These are so named because the refusal is dependent on the relationship of the mark that is
subject to the application with an earlier registered trade mark or other earlier such as an
unregistered mark or a copyright. These include;
1. Customary Marks (Section 74(2)(e))
Marks that consists exclusively of a sign or indication which has become customary in
the current language or in the bona fide and established practices of the trade in respect
of the goods or services for which it is registered shall not be registered.
This provision had occasion to be interpreted in the case of Merz & Krell GmbH &
Co Case C-517/99 [2000] ECR I-6959. This provision means that if a word or mark is
traditionally used i.e for advertisement or describing goods, and such word has
become so popular, such word may not be a registered mark.
In K-Swiss Inc. v OHIM.21An international application designating the EU for athletic
shoes in class 25 was made (filed on 23 May 2013): The General Court confirmed the
BoA’s decision that the mark applied for was devoid of any distinctive character, was
inherently banal and, as the variation in stripe size appeared to be determined by the

19
Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) And Boots- und Segelzubehör Walter Huber (C-
108/97), Franz Attenberger (C-109/97)
20
OHIM v Wm. Wrigley Jr. Company [2004] R.P.C (18) 327 ECJ. For further readings on the submissions made with
regard to the subsection, see Windsurfing Chiemsee v Huber and Attenberger [1999] E.C.R 1-2779 ECJ
21
Case T-3/15, 4 December 2015
 shoe shape, it did not depart sufficiently from the practices of the sector. There was
insufficient evidence to allow the General Court to conclude that the mark had any
distinctive character and the General Court rejected the submission that the practice of
putting geometric shapes on the side of sports shoes meant that the average consumer
would pay particular attention to them and consider them to be reflective of origin.
2. Customary Marks (Section 74(2)(f))
A sign that consists exclusively of:
(i) The shape which results from the nature of the goods themselves;
(ii) The shape of goods which is necessary to obtain a technical result;
(iii) The shape which gives substantial inherent value to the goods;
Shall not be registered.
Société des Produits Nestlé SA v Cadbury UK Ltd22 which focused on the registrability of
Nestlé’s fourfinger KitKat shape mark. In his High Court judgment in January 2014,
Arnold J referred to the Court of Justice of the European Union (“CJEU”) a number of
questions relating to the registrability of shape marks. The questions covered what needs
to be proved to establish acquired distinctiveness as well as the shape-specific exclusions
to registrability.
The question asked by Arnold J was;
“ in order to establish acquired distinctiveness, is it sufficient for a shape mark to be merely
recognised as/associated with a particular product; or is it necessary for the shape mark to
be relied upon by customers to identify the origin of the product?”
Arnold J, consistent with the approach traditionally taken by the UK courts in this regard,
expressed a preference for the stricter requirement of reliance.
In its response, it is notable that the CJEU reformulated the reference and did not use the
term “reliance”, instead confirming that the shape mark alone (as opposed to any other
trade mark which may be present) must be “perceived” as an indicator of origin. The
judgment added that it is a “fundamental condition” that, as a consequence of use, the sign
alone must serve to identify in the minds of the relevant persons the goods to which it
relates as originating from a particular company.
In Nestlé v Mars the court was of the view that, the level of perception required must be
such that consumers would rely upon the sign as denoting the origin of the goods if it were
used on its own. On the facts Nestlé’s appeal was dismissed.
As to the second question asked by Arnold J, of where a shape consists of three essential
features, one of which results from the nature of the goods themselves and two of which

22
[2014] EWHL 16 (Ch)
 are necessary to obtain a technical result, is registration of that shape as a trade mark
precluded?
3. Identical Marks for Identical Goods or Services (Section 74(2)(j))
Where a mark that is sought to be registered is identical to an earlier mark or so nearly
resembles the earlier mark as to deceive or cause confusion and is intended to be used
for identical goods or services, a likelihood of confusion is presumed and the
registration of such a mark is prohibited.
The question whether a sign is identical to an earlier trade mark is a question of fact
for the courts to decide. In Diffusion SA v Sadas Vertbaudet 2003 SA ECR I-2799 it
was found that a sign is identical if it reproduces, without any modification or addition,
all the elements constituting the trade mark or where, viewed as a whole, it contains
differences so insignificant that they may go unnoticed by an average consumer who is
deemed to be reasonably well informed, reasonably observant and circumspect. Herein
the marks at issue were Arthur in a stylized form and Arthur et Félicie in normal font.
The difference between Section 74(2)(j) and Sections 74(2)(h) and (i) is that (j) applies
to situations where the identical nature of the marks and good are apparent and (h) an
(i) applies to scenarios where there is a likelihood of confusion. Thus (j) doesn’t require
evidence of the likelihood of confusion like (h) and (i), hence the criterion of under (j)
is interpreted strictly.23
See also Decon Laboratories v Fred Baker Scientific Ltd. 2001 RPC 293,wherein the
earlier registered trademark was the word “Decon” for cleaning products and the
applicants sought to register the words “Decon-Phene”, “Decon-Clean” and “Decon-
Phase” as trademarks for their cleaning products. The court found that the use of an
identical sign with a suffix descriptive of the nature and quality of the goods was use
of an identical sign.

4. Incomplete Identity of Marks and Goods or Services (Sections 74(2)(h)(i)

Where the mark applied for is either;
i. identical to the earlier mark and the goods and services are similar
ii. similar to the earlier mark and the goods and services are identical
iii. similar to the earlier mark and the goods and services are similar

and is likely to confuse the public as to the origin of the goods or services designated
by the mark, the mark is not registrable.

23
Diffusion SA v Sadas Vertbaudet 2003 SA ECR I-2799
 This is a common ground for refusal, because herein the identity of the marks is
incomplete what must be shown for the ground to apply is a likelihood of confusion as
to the origin of the goods on the part of the public.
The test for confusion was stated thus by Parker J in Pianotist Co.’s Application “You
must take the two words. You must judge of them, both by their look and by their
sound. You must consider the goods to which they are to be applied. You must consider
the nature and kind of customer who would be likely to buy those goods. In fact, you
must consider all the surrounding circumstances; and you must further consider what
is likely to happen if each of those trademarks is used in a normal way as a trade mark
for the goods of the respective owners of the marks. If, considering all those
circumstances, you come to the conclusion that there will be a confusion -that is to say,
not necessarily that one man will be injured and the other will gain illicit benefit, but
that there will be a confusion in the mind of the public which will lead to confusion in
the goods-then you may refuse the registration, or rather you must refuse the
registration in that case.”24 In this case the registered trademark was the word “Pianola”
for a part of a piano and the mark sought to be registered was the word “Neola” for
another class of piano parts. The court having considered the nature of the goods sought
to be protected by both marks and the class of persons who use them found that there
could be no confusion in the public as to their origin.
The test was stated thus in Sabel BV v Puma AG, Rudolf Dassler Sport, “the
appreciation of the likelihood of confusion depends on numerous elements and, in
particular, on the recognition of the trade mark on the market, of the association which
can be made with the used or registered sign, of the degree of similarity between the
trade mark and the sign and between the goods or services identified. The likelihood of
confusion must therefore be appreciated globally, taking into account all factors
relevant to the circumstances of the case. That global appreciation of the visual, aural
or conceptual similarity of the marks in question, must be based on the overall
impression given by the marks, bearing in mind, in particular, their distinctive and
dominant components. In this respect, the perception of the average consumer plays a
decisive role in that global appreciation and the more distinctive the mark, the greater
will be the likelihood of confusion.” The court further noted that the average consumer
normally perceives a trade mark as a whole and does not proceed to analyse its various
details.25 The application here was for the registration of a mark depicting a bounding
feline creature with the words “Sabel” underneath for several items of clothing, the
registered mark on the other being a similar bounding feline creature alone used for
several items of clothing. The court in this instance found that the registered mark was
not of such distinctiveness as to lead to confusion between the two marks thus justifying
the prohibition of the registration of the applicant’s mark.

24
Pianotist Co.’s Application
25
Sabel BV v Puma AG, Rudolf Dassler Sport 1998 RPC 199
 Confusion then, requires that the relevant section of the public believes the goods or
services came from the same undertaking or economically linked undertakings. Again,
the basic function of a trade mark, to operate as an indicator of origin, would not be
fulfilled in such a case.26

See also Australia Wine Importers’ Trade Mark 1889 RPC 311
Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc. 1999 E.T.M.R 1 ECJ
5. HONEST CONCURRENT USE
Where an enterprise had honestly been using a sign identical or similar to an earlier mark
or other right for an overlapping period of time without objection being made such a sign
could be registered as a mark. This is based on the acquiescence of the owner of the first
mark. In Pirie's Application27 the House of Lords gave a list of non-exhaustive guidelines
in determining whether there is a case of concurrent use. These include;
1. There must be a likelihood of confusion between the two marks.
2. The original choice of mark by the offending party must have been honest. That is
to say the offending party must either not have known of the first mark or if he
knew he honestly believed them to not be confusing.
3. The second mark must have been used for a substantial amount of time (five years
in the Pirie case).
4. Whether there has been actual evidence of confusion in the use of the trademarks.
If so this would be in favor of the assumption that the mark wasn't honestly used.
5. Whether the second company's trade is larger than that of the first company. if so
this weighs on the side of the registration of the mark.

This list is not exhaustive and further surrounding circumstances are also considered.
6. DEALING IN TRADEMARKS
Section 74 (i) states that “The exclusive right to a mark under this Act shall be acquired by
registration in accordance with the provisions under this Part.” 28
6.1 Assignment of a trademark
After a trademark has been filed or registered, the proprietor can deal with that right just like any
other form of property, whether tangible or otherwise. What this means is that if he so wishes, the
proprietor can transfer ownership of the right to another party. This can be from the ownership of
one or more individuals to a limited company or from one company to another.

26
27
1957 RPC 379
28
Industrial Property Act, 2010
Assignment is defined as the transfer of the title in a chose in action. For example, ownership of a
trademark is transferred by means of an assignment in writing which is signed by or on behalf of
the previous owner of the trademark, who is the assignor. In intellectual property law, an
assignment must be distinguished from an exclusive licence, which is similar in many practical
respects, but which does not involve the transfer of the title to the right. Assignments may be partial
in terms of: some, but not all, goods or services for which the mark is registered and use in a
particular manner or in a particular locality.29
Assigning ones rights in a trademark is covered by Section 84 of the Industrial Property Act in
Botswana. The section states that “The rights in a mark may be transferred by cession, assignment,
testamentary disposition or by operation of law.”30 Under the provisions of the Act, trademarks
are easily alienable. Under s 84, trademarks can be assigned, or pass by testamentary disposition
or by operation of law in the same way as other personal property with or without the goodwill of
a business. This provision is a replica of the United Kingdom’s Trade Mark Act of 1994.31
In other jurisdictions such as the United Kingdom and South Africa Improper Assignment
Although trade-marks may be assigned: a. with or without the associated goodwill; and b.
in respect of all or some of the wares and services with which it had been used by the
assignor, care must be exercised to ensure that the trademark can continue to serve distinguish
the wares and services of the assignee from those of others, including the assignor. A formal
assignment does not give rise to any presumption that the trade-mark will continue to be
distinctive in the hands of the assignee. If an assignment either deceives or confuses
consumers as to the source of the associated wares or services, the subject trade-mark will
lose its distinctive character.
The case of Oilwell (Pty) Limited v Protec International Limited and Others32 deals the
assignment of trademarks. In the Protec Case the Court has ruled that the assignment of a trade
mark to a foreign entity without prior approval from the South African Treasury does not constitute
a contravention of Regulation 10(1)(c) of the Exchange Control Regulations. In addition it has
ruled that even if such an assignment were a contravention of Regulation 10(1)(c) the assignment
agreement would not be rendered null and void, ab initio. The Protec case considered whether the
assignment of a trade mark from a South African resident company to a foreign company was a
contravention of Regulation 10(1)(c). Based on principles of interpretation of legislation, the Court
was of the view that it would be wrong to interpret Regulation 10(1)(c) as applying to assignments
of trademarks.
On the issue of assignments of trademarks without prior approval rendering the assignments null
and void, the Court found that an assignment should not be rendered invalid in instances where
there had been non-compliance with the Regulations. Although this case deals with assignment of
a trademark to a foreign entity it illustrates that it is possible to assign a trademark to another.

29
Bainbridge D, Intellectual Property Law, Person, Eight Edition, Chp 20, pp. 723
30
Ibid
31
Ibid
32
(2011 (4) SA 394 (SCA)) [2011] ZASCA 29; 295/10 (18 March 2011)
6.2 Loss of Distinctiveness
The relevant authority when it comes to a loss of distinctiveness is the case of Pepkor Retail (Pty)
Ltd v Truworths Ltd33. In this case a Trademark registered as THE LOOK used in fashion retail
industry had no inherent or acquired distinctiveness. The Supreme Court ordered the removal from
the trade mark register ordered. The court noted that: “Thus, for a mark to be registrable in terms
of the Act (and for it to remain on the register), it must have inherent distinctiveness or, if not, it
must have acquired distinctiveness by reason of prior use”.
A trade-mark may lose distinctiveness if the business fails to “police” improper use of the
trade-mark by itself and others. This generally refers to steps taken by a business to correct
instances where a trade-mark is improperly used as a generic term for the product or service
instead of a brand name. This includes use of the trade-mark as a generic term by consumers,
licensees, distributors, retailers, suppliers, journalists and, most importantly, competitors. In
most cases, generic use of a trade-mark occurs through ignorance and can be simply corrected
with a polite letter. However, where a competitor has adopted the trade-mark for strategic
reasons, more formal legal action may be required. A trademark may also be improperly used
by the business itself. Although it is important to highlight trade-marks from a marketing
perspective, a business should take steps to ensure that consumers also know the generic
name of its products and services. For instance, a business should ensure that its own
promotional and packaging material also includes references to the generic name of the
product or service. The foregoing can be special risk where a business enjoys exclusive
patent rights in a product or service that is commonly identified by its trade-mark rather
than a generic term. When the patent expires and falls into the public domain, the former
trade-mark may similarly become available to competitors as a common name for the product
or service. For this reason, businesses are encouraged to develop both a generic and a brand
name for patented products and services. If a trade-mark becomes the common name of the
associated good or service, it cannot serve its function as a trade-mark to distinguish the
wares and services of one business from others. It consequently loses its status as a trade-
mark and may be used by any business in the industry. This was the unfortunate fate of the
ESCALATOR trade-mark for “moving staircases” To determine whether a trade-mark has
become generic, the case law suggests that two questions be considered: a. Will use of the
mark, or a confusing mark, by other businesses deceive the consumer into believing that, in
purchasing the wares or services so named, they are purchasing those of the original business
source associated with the mark?; or b. Will consumers understand that the mark refers only
to a type of good or service available from several business sources? If deception would result
from its use by other businesses, the mark still functions as a trademark for the original
business source and has not yet fallen into the public domain. If no deception would result,
the mark has become the common name of the associated good or service and may be used
by any business.
6.3 Non Use

33
ZASCA 146 (30 September 2016)
Section 87 of the Industrial Property Act states that “Any interested person may make an
application to the Registrar to remove, from the register, a mark in respect of any of the goods or
services in respect of which it is registered on the ground that up to one month prior to filing the
application, the mark had, after its registration, not been used in Botswana by the registered owner
or a licensee during a continuous period of three or more years.
(2) The Registrar shall not remove a mark from the register if the owner of the mark shows that
circumstances existed which prevented the use of the mark and that there was no intention not to
use the mark in respect of those goods or services, or that there was no intention to abandon the
use of the mark in respect of the said goods or services.
(3) An application for the removal of a mark from the register of marks shall be served on the
owner and filed with the Registrar in the manner and within the time prescribed.
The effect of this provision is that a trade mark registration is not vulnerable to cancellation, for
non-use, within the first 3 years after issue of the registration certificate. This period is, therefore,
often referred to as the honeymoon period by trade mark attorneys. However, after the honeymoon
period, trade mark proprietors need to be aware that a trade mark registration is vulnerable to
cancellation for non-use.
In order to successfully defend a cancellation action, the trade mark proprietor is required to show
that the registered mark was indeed used in the relevant 3 year period. However, the alleged use
must be in relation to the goods or services for which the trademark is registered and, in addition,
the use must constitute bona fide use.
The leading case is that of McDonald v Joburgers Drive. The facts were that between 1968 and
1985 McDonald's Corporation ('McDonald's) had registered about 52 trade marks in South Africa.
None of them had been used in this country by the corporation. In 1993, Joburgers Drive-Inn
Restaurant (Pty) Ltd ('Joburgers'), a local fast-food company which started trading under a Chicken
Licken franchise in 1984, applied for the registration of the trademarks McDonald’s, BIG MAC
and the M device, and for the removal of the McDonald’s trade marks from the register on the
ground of non-use. Later that year Joburgers bought a ham-burger stand in Durban; it seems that
it had been conducting business since 1978 under the name MACDONALDS. McDonald's
opposed the removal of its marks from the register, and immediately applied again for the
registration of the affected marks in its name. As a result of the various disputes, three applications
were heard together by the Supreme Court:" an application by McDonald's that Joburgers be
interdicted from, among other things, infringing McDonald’s trademarks, coupled with a counter
application by Joburgers for, among other things, the removal of the McDonald’s registration; an
application by Dax for the removal of 28 of the McDonald's trademarks, coupled with a counter
application by McDonald's for an interdict to stop Dax infringing the McDonald's trademarks; and
an application by McDonald's for an interdict against Joburgers and Dax on the basis of South
Africa’s new protection of famous trademarks. The first two applications were subject to the Trade
Marks Act 62 of 1963, now repealed; the third, to the Trade Marks Act 194 of 1993. It was
subsequently held that the McDonald’s trademarks should not be removed from the register since
the population of South Africa were aware of the brand McDonald’s. There was no lack of use of
the McDonald’s trademark in this case and the application to remove it on that ground was rejected.
In Westminster Tobacco Co v Philip Morris Products34, the Supreme Court of Appeal (SCA)
commented on what constitutes bona fide use, for the purposes of Section 27(1)(b) of Act. The
crux of the case turned on whether Westminster Tobacco Co (“WTC”), the registered proprietor
of two PARLIAMENT trade mark registrations, made use of its mark, in good faith, during the
relevant 5 year period. If not, it was liable to lose its registrations because its competitor (Philip
Morris Products SA, “PMI”) had applied for cancellation of its registrations on the basis of non-
use, in terms of Section 27(1)(b) of the Act.
WTC had registered the trade mark PARLIAMENT in South Africa in relation to, essentially,
cigarettes. PMI, however, uses the trade mark PARLIAMENT internationally in respect of one of
its premier brands of cigarettes. PMI could, therefore, not register or use the mark PARLIAMENT
in South Africa, in relation to cigarettes, due to WTC’s earlier trade mark registration in South
Africa. PMI, accordingly, sought to cancel WTC’s registration, on the basis that the
PARLIAMENT mark was allegedly not used in good faith, by WTC, for a continuous period of 5
years, from the date of issue of the registration certificates.
In the appeal judgment, the SCA had regard to the international case of Ansul BV v Ajax
randbeveiliging BV 2003 (RPC) C-40/01, in the European Court of Justice.35 The SCA found that
the enquiry into bona fide use is a factual enquiry and required:
1. use of the registered trade mark in relation to goods or services of the type in respect of
which the mark is registered;
2. use of the registered trade mark as a trade mark, for the commercial purposes that the trade
mark registration exists to protect; and

34
SA (925/2015) [2017] ZASCA 10 (16 March 2017)
35
Ajax applied for revocation of Ansul’s trade mark and the question of what constituted genuine use was referred
to the Court of Justice, which ruled that genuine use does not include token use for the sole purpose of preserving
the rights conferred by a trade mark. When assessing whether use is genuine, regard should be had to all the facts
and circumstances relevant to deciding whether the commercial exploitation is real, in particular: whether such use
is viewed as warranted in the economic sector to maintain or create a market share in relation to the goods or
services for which it is registered; the nature of the goods or services; the characteristics of the market and the
frequency of the use of the mark.
Furthermore, the Court of Justice ruled that the fact that a mark is used in relation to goods not newly available on
the market but sold in the past does not mean to say that the use is not genuine if the use is in respect of component
parts integral to the makeup or structure of the goods or for goods or services directly connected with goods
previously sold and intended to meet the needs of customers of those goods. As regards use prior to the sale of
goods or the provisions of services, such as in advertising and promotional literature, suggested as being within the
scope of genuine use by Jacob J in Euromarket v Peters, the Court of Justice accepted that use could be in relation
to goods or services about to be marketed for which preparations were already underway to secure customers, such
as by means of an advertising campaign.
 3. use of the registered trade mark in the course of trade and for the purpose of establishing,
creating or promoting trade in the goods or services in relation to which the mark is used.
The court indicated that the use does not have to be extensive, but that it must be genuine and not
merely as a token. In other words, the use must not be solely to preserve the rights conferred by
the mark, but must be consistent with the essential function of a trade mark, which is to sufficiently
distinguish the goods in relation to which it is used from other goods, which have a different origin.
In addition to the above, the court also found and that it is irrelevant if the use is motivated by the
fear of removal from the register or protecting the proprietor’s trade generally or even from
preventing the mark from falling into the hands of a competitor, as long as the use is bona fide and
genuine and principally directed at promoting trade in goods bearing the mark. The court,
however, cautioned that it is not permissible to use the mark for an ulterior purpose, not associated
with a genuine intention of pursuing the object for which the Act allows the registration of a trade
mark and protects its use.
In making a determination as to whether WTC’s use of the mark was bona fide and genuine, the
court applied the test set out above. The SCA found that, in the circumstances, the use of the mark
PARLIAMENT was bona fide because it was affixed by WTC to goods covered by its registration,
i.e. cigarettes, for the purpose of identifying the source from which the goods were derived and
distinguished it from its competitors. The Court also found that there was a commercial purpose
in WTC providing different offerings aimed at different sectors of the market and pricing them
differently. Accordingly, the court expressed the view that because WTC’s strategy for the
PARLIAMENT brand of cigarettes precluded a full-blooded launch of a competing product in the
low price segment did not mean that the launch was not genuine.
In light of the above, WTC successfully defended the application for cancellation of its marks on
the basis that it, in fact, did use its trade marks in good faith and that the use was genuine. Although
it was not relevant to the SCA case, it is worth knowing that in addition to using a trade mark,
trade mark proprietors may also prevent losing a trade mark registration, for failure to use the
registration, by associating related trademarks (that are in use). However, associating trademarks
places some limitations on how the associated trademarks may be dealt with. It is, therefore,
important to take a considered approach when dealing with registered trademarks and to bear in
mind that when it comes to registered trademarks, beware to use it or you may lose it!
In Lacoste v Crocodile International36, The Supreme Court of New Zealand has revoked
registration of one of the Lacoste crocodile trademarks, on the basis that Lacoste had not made
genuine use of the particular trademark for over three years.

6.4 Becoming Deceptive

A trademark can be cancelled on the ground of it becoming deceptive. A ground for refusal applies
where a trade mark, in consequence of the use made of it by the proprietor or with his consent in

36
[2017] NZSC 14
respect of the goods or services for which it is registered, is liable to mislead the public, particularly
as to the nature, quality or geographical origin of those goods or services. The list of examples is
illustrative only.
The question is whether the trade mark, in fact, is liable to mislead the public because of the use
made of it by the proprietor or with his consent. It seems beyond doubt that this could include use
of a sign similar to or including the registered trade mark and not limited to the use of the trade
mark exactly as registered.
In other words, it is the consequence of use that is important for this ground for revocation rather
than the nature and extent of the use.
It is submitted that the relevant class of persons are consumers and end users and, where they exist,
intermediaries who are in a position to influence consumers in their choices, thereby passing on
any misunderstanding to which they are subject to the consumers and end users.
This ground of revocation, unlike the one relating to trademarks that have become common names,
is couched in terms of use by the proprietor or with his consent. We can only assume that the
difference is deliberate. On that basis, revocation on the ground that a trade mark has become a
common name because of the acts or inactivity of the proprietor must be restricted to the
proprietor’s act or inactivity and not someone having his consent: for example, a licensee. For
trademarks that have become misleading, this can clearly encompass use by the proprietor’s
licensee or distributor.37
In General Electric Co v General Electric Co Ltd38; It was stated that it was not necessary to
establish any intention to deceive on the part of an infringer against whom an injunction to restrain
his use of a trade mark was sought. The right of property in a trade mark had special characteristics.
One, which it shared with patents and with copyright, was that it was a monopoly, that is to say, it
was a right to restrain other persons from using the mark. But it was an adjunct of the goodwill of
a business and incapable of separate existence dissociated from that goodwill. The interest of the
general public requires that they should not be deceived by the trade mark. It ought not to tell a lie
about the goods. Two main kinds of deception had been the subject of consideration. These were
misrepresentation (a) of the character of the goods to which the trade mark was attached, and (b)
as to their origin, i.e. that they were the product of some other manufacturer.
But the interest of the public in not being deceived about the origin of goods had and has to be
accommodated with the vested right of property of traders in trademarks who used similar marks
upon their goods could thus come to be on sale to the same potential purchasers with the
consequent risk of their being misled as to the origin of the goods.
Under this doctrine a trade mark remained entitled to protection in cases where the use of it had
not originally been deceptive but a risk of deception had subsequently arisen as a result of events
which did not involve any dishonesty or other wrongful conduct upon the part of the proprietor of

37
Ibid
38
[1973] RPC 297, [197z]1 WLR 729
the mark. If, however, his own Wrongful conduct had played a part in making the use of the mark
deceptive, the Court of Chancery would not grant him an injunction against infringement.
In Bowden Wire Ld. v. Bowden Brake Company Ltd39, the Plaintiff Company was the proprietors
of the Letters Patent for the well-known "Bowden wire" used in connection with the transmission
of power or cycle and motor cycle brakes. In 1901 promoted the Defendant Company, and
transferred to it that part of their business which was concerned with brakes for pedal cycles only.
In 1903 the Plaintiff Company registered a Trade Mark in Class 13 for brakes for velocipedes,
consisting of a picture of a coil of wire with the word “Bowden" enclosed therein, and they granted
a licence to the Defendant Company to use this mark in connection with brakes for pedal cycles.
The licence was limited to the continuance of the Letters Patent. In 1904 the Plaintiff Company
registered the same Trade Mark in Class 13 in respect of component parts, attachments, and
accessories (other than brakes) of velocipedes, &c. On the expiration of the Letters Patent the
Defendant Company continued to use the mark not only on brakes for pedal cycles but also in
respect of brakes for motor cycles, which they then began to manufacture. The Plaintiff Company
brought an action to restrain the Defendant Company from using the Trade Marks on any goods
manufactured by them. The Defendant Company moved to expunge the Trade Marks, and alleged
that they were not distinctive, and that they were calculated to deceive. It was held that the
Defendant Company had no general right to continue to use the Trade Mark after the term of the
licence had expired, and no right: to prevent the Plaintiff Company from continuing to use the
mark in the same manner as they had used it since the registration ; also, that the Trade Marks
were distinctive and not deceptive, but, on the ground of non-user, an Order should be made under
Section 35 (1) of the Trade Marks Act 1905 varying the entry of first-mentioned Trade Mark by
restricting it to brakes for road vehicles other than velocipedes or cycles wholly propelled by the
physical force of the rider. In the action an injunction against infringement of the Trade Marks,
limited in accordance with the above-mentioned restriction, was granted with costs. The Plaintiffs
appealed. Held, that both Trade Marks must be removed from the Register as not being distinctive
and as being calculated to deceive. The Plaintiffs appealed to the House of Lords. The appeal was
dismissed, but as to the second Trade Mark on grounds not altogether those on which the Court of
Appeal rested their judgment, namely the similarity of the goods for which the marks were
registered, but on the ground that the Plaintiffs got the second registration in the acknowledged
capacity of exclusive owners of the mark under the first registration, and was merely an extension
of their rights under the first, and that that being expunged, the second also should be expunged.

39
(No.1) (1914) 31 RPC 358