TRADE MARKS

A trade mark is a designation or sign or a combination of signs under which goods or services
are sold and which has become known to the public, and which is capable of distinguishing
goods of one undertaking from goods of another undertaking. In other words, a trade mark is a
sign, phrase, a logo, or a combination of signs, colours, shapes, or sound that identifies the
source of a particular product, and is capable of distinguishing goods of one undertaking from
goods of another undertaking. Under section 1 of the Trade Mark (Amendment Act), 2014 (Act
876), a trade mark is a sign or a combination of signs, capable of distinguishing goods of one
undertaking from goods of another undertaking.

Accordingly, trade marks indicate to the consumer the originator or the source of the product for
which he or she is buying, and this helps to prevent deception of the public.

In Ghana, the legal regime of Trade Marks can be gleaned from article 18 of the Constitution
1992, and the Trade Marks Act, 2004 (Act 664), and the Trade Mark Amendment Act, 2014 (Act
876).

WHAT QUALIFIES AS A TRADE MARK?

A careful analysis of the various definitions of trade mark reveal that for a sign, or a logo to
qualify as trade mark, the following elements must be established:

1. It must be a sign or a mark

2. Which is capable of distinguishing goods of one undertaken from goods of another
undertaking
3. And should have consisted of personal names, shapes, colours, signs and others.

1. It must be a sign or a mark

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In order to qualify as trade mark protection, the mark in question must be a sign. A sign
according to its ordinary grammatical meaning is any indication or gesture or graphic
representation that conveys information, in the context of trade mark about a particular good or
service. It therefore connotes that anything that is not a sign in the sense of being able to provide
information about the product sought to be marked cannot be the subject of trade mark. It must
be stated that the sign must be distinct from the product being marked, and therefore, the product
itself cannot be the subject of the mark. Accordingly, in Re Coca Cola (1896), the The
application was to register the shape of the famous Coca-Cola bottle as a mark and was refused
because the definition of a trade mark did not include containers. This was a decision under the
old law, and would not now be the same, but Lord Templeman said: This is another attempt to
expand the boundaries of intellectual property and to convert a protective law into a source of a
monopoly ... It is not sufficient for the Coca-Cola bottle to be distinctive. The Coca-Cola Co
must succeed in the startling proposition that a bottle is a trade mark. If so, then any other
container or any article of a distinctive shape is capable of being a trade mark. This raises the
spectre of a total and perpetual monopoly in containers and articles achieved by means of the
Act of 1938.

In essence, it may be asserted that to for a mark to constitute a sign, it must convey some
information about the product sought to be marked and it must have a distinctive character
capable of distinguishing goods of one undertaking from another. Therefore, a sign which seeks
to go beyond the indication of the origin of the goods to conferring on the proprietor a monopoly
in the goods itself is invalid.

In Philips Electronics V. Remington Consumer Products [1998] RPC 238 at 298, Philips sued
Remmington’s Consumer products on grounds of infringement of their trade mark. Philips were
the owners of 208 Mark shaver, whilst Remmington’s shaver was DT 55 Wet and Dry Shaver. It
was a three-headed rotary model. The three heads at the top were arranged under an equilateral
triangle in a similar fashion to the 208 Mark. In the Court below, Philips action was dismissed.
But Jacob J made an illustrative statement thus: 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 ...

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 2. Capability of Distinguishing Goods of one Undertaking from Goods of Another
Undertaking.

Another compelling element that must be met to qualify a particular designation for trade mark is
that it must be capable of distinguishing goods of one description from goods of another
description. This is clearly evident from the wording of section 1 of Act 876. This is probably to
avoid the likelihood of confusion and to prevent the public from being deceived as to the origin
of the goods. Only a sign which is ‘capable of distinguishing’ may be a trade mark. This reflects
the essence of a trade mark as an identifying feature related to goods or services. If the sign does
not identify it cannot distinguish: it must allow the public to recognise one trader’s product as
emanating from a different source to products emanating from other traders. A sign that is
distinguishing is said to be ‘distinctive’. A sign may distinguish in one of two ways, either by
being distinctive in its nature (inherently distinctive), or by having become distinctive through its
use in relation to a particular trader’s product (factually distinctive).

The purpose of the requirement of distinguishing is rooted in the function of trade mark to
indicate or identify the origin of the marked goods and to guarantee customers against likelihood
of confusion. In effect, the sign or mark must be ably capable of being understood from the
description, i.e. it should be visible. This may be done through graphic representation as was
noted in the case of Ralf Sieckmann vs Deutsches Patent [2003] Ch. 487, in that case, The
Applicant intended to register an olfactory/smell mark, before the German Patent and Trade
Marks Office, in Classes 35, 41 and 42 for which the Applicant provided the following
description:

“Trade mark protection is sought for the olfactory mark deposited with the Deutsches Patent-
und Markenamt of the pure chemical substance methyl cinnamate (= cinnamic acid methyl
ester), whose structural formula is set out below. Samples of this olfactory mark can also be
obtained via local laboratories listed in the Gelbe Seiten (Yellow Pages) of Deutsche Telekom
AG or, for example, via the firm E. Merck in Darmstadt. C6H5-CH = CHCOOCH3″

Subsequently, the Applicant made the following addendum to the description:

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’The trade mark applicant hereby declares his consent to an inspection of the files relating to the
deposited olfactory mark “methyl cinnamate” pursuant to Paragraph 62(1) of the Markengesetz
and Paragraph 48(2) of the Markenverordnung (Trade Mark Regulation).’”

The Applicant also submitted a sample of the smell in a container and submitted that the scent
was usually described as “balsamically fruity with a slight hint of cinnamon”.

 The German Patent and Trade Marks Office refused the application on account of
graphical representation and non-distinctiveness. The European Court of Justice held
that: a sign must be capable of being represented graphically. Thus, the graphic
representation must enable the sign to be represented visually, particularly by means of
images, lines or characters, so that it can be precisely identified. The precise
identification is to enable the sign to be distinguished against other trademarks so as to
avoid any form of confusion. Accordingly, the court stated that: Graphic representability
determines the precise subject of protection afforded to registered proprietor and thus
enables the competent authorities to fulfil their obligations to examination of marks
while further ensuring that the competitors or other members of the public have
knowledge of rights of the registered proprietor without subjectivity.

3. The Sign may consist of personal names, colours, sound and smells

It is interesting to note that it is not only conventional signs that can be the subject matter of
trade mark. However, colours, smells, sounds may also form the subject matter of trade
mark. In regards to colours, they must have been of distinctive nature and should have
acquired a secondary meaning as a sign capable of distinguishing goods of one undertaking
from goods of another undertaking rather than merely been decorative in nature.

In Unilever Ltd’s Trade Mark (1987) an application for registration of a colour was refused
as the colour had not been chosen as a sign and had not acquired secondary meaning as a
trade mark. The same was held in John Wyeth Coloured Tablet Trade Mark (1988). The
colours blue and yellow were used to indicate particular dosages, but were held to be

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 common in the trade and not distinctive, so that a generic drug manufacturer was able to
apply the same colours to indicate the same dosages.

In Ralf Sickman, the Court laid down a test to the effect that S for a colour to pass the graphic
representation test, it must be clear, precise, self-contained, easily accessible, intelligible,
durable and objective. Therefore, in applying this test in Libertel Groep V. Benelux-
Merkenbureau [200] FSR 65, it was held that the colour orange was not qualified to be
registered as a trade mark. In that case, the Applicant had applied for registration of the Colour
Orange for telecommunications goods and services before Benelux Trade Marks Office
(BTMO). The application form contained an orange rectangle and in the space for describing the
trade mark, the word ‘orange’ was mentioned without reference to colour code.

The BTMO provisionally refused the trade mark registration and observed that unless the
Applicant demonstrates that the mark has acquired a distinctive character. The Applicant
approached the Regional Court of Appeal, Hague, Netherlands which was dismissed. The
Applicant appealed to the Supreme Court of Netherlands. The Supreme Court of Netherlands
prepared the following questions for opinion of the Europan Court of Justice.

1. Is it possible for a single specific colour which is represented as such or is designated by

an internationally applied code to acquire a distinctive character for certain goods or
services within the meaning of Article 3(1)(b) of the Directive?

2. If the answer to the first question is in the affirmative:

(a) In what circumstances may it be accepted that a single specific colour possesses a distinctive
character in the sense used above?

(b) Does it make any difference if registration is sought for a large number of goods and/or
services, rather than for a specific product or service, or category of goods or services
respectively?

The ECJ held that:

Colour must satisfy three conditions: i) it must be a sign; ii) that sign must be capable of graphic
representation; and iii), the sign must be capable of distinguishing the goods or services of one
undertaking from those of other undertakings. Accordingly, the mere sample of a colour alone

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does not qualify as the subject matter of trade mark. However, a colour alone may be classified
as the subject matter of trade mark if it can be represented graphically. The graphic
representation must be clear, precise, self-contained, easily accessible, intelligible, durable and
objective. The Court thus noted that: a colour per se, not spatially delimited, may, in respect of
certain goods and services, have a distinctive character, provided that, inter alia, it may be
represented graphically. The latter condition cannot be satisfied merely by reproducing on
paper the colour in question, but may be satisfied by designating that colour using an
internationally recognised identification code.

Sound Signs: Can sound signs be registered as Trade Marks? The case of Shield Mark BV v.
Joost Kist [2004] Ch. 97 is illustrative. In that case, the Dutch company Shield Mark BV had
registered 14 sound trademarks at the Benelux trademark office, the first on 5 June 1992 and the
most recent on 2 February 1999, for various services like computer software and seminars in the
areas of promotion, marketing, intellectual property and commercial communication. Four of
those trademarks consist of a musical stave with the first nine notes of the musical composition
"Für Elise" by Ludwig van Beethoven. Two of them have the added remark "sound mark". The
trademark entries consist of the representation of the melody formed by the notes (graphically)
transcribed on a stave. In one case the remark "played on a piano" was added. Four other
trademarks consisted of the first nine notes of "Für Elise". Two of them also had "sound mark"
added as annotation. The trademark consists of the melody described, plus, in one case, the
remark "played on a piano". Three further marks consist of the sequence of musical notes "E,
D#, E, D#, E, B, D, C, A". Two of them also state "sound mark". The trademark consists of the
reproduction of the melody formed by the sequence of notes as described, again in one case
"played on a piano". A sound trademark consisting of an onomatopoetic word (called
"onomatopoeia"), the Dutch "Kukelekuuuuu" crow of a rooster was used for the computer
software. Another sound trademark is registered for the first nine notes of Ludwig van
Beethoven's composition "Für Elise" used for a jingle in a promotion campaign in October 1992.

The crow of the rooster was used in a Shield Mark software developed for lawyers and
trademark specialists to signal the start of the program. Flyers displayed on stands in bookshops
and newspaper kiosks played the signature tune each time one was taken from the stand. Shield

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Mark's competitor, Joost Kist with his company Memex, which also operates in the field of legal
advice for communication, started a promotion campaign in January 1995 also using the first
nine notes of "Für Elise". Furthermore, Joost Kist also utilized Shield Mark's registered sound of
the crow of the rooster at the start of a software he sold. Shield Mark brought an action against
Mr. Kist for infringement of its trademarks and unfair competition.

The European Court of justice noted that sound can constitute the subject matter of trade mark
provided it is distinctive and is capable of distinguishing goods of one undertaking from goods of
another undertaking. However, it must meet the test as was established in the Sieckmann case.
Thus, it must be capable of being represented graphically, and must be clear, precise, self-
contained, accessible, intelligible, durable and objective.

As consequence for the Shield Mark case, the Court ruled that a graphical representation in mere
text form such as ‘the first nine notes of "Für Elise" or "the crow of a rooster" at the very least
lack precision and clarity and therefore cannot constitute a graphical representation of that sign
for the purposes of Article 2 of the Directive. The same applies for onomatopoeia, as it is not
possible for the competent authorities and the public, in particular traders, to determine whether
the protected sign is the onomatopoeia itself, as pronounced, or the actual sound or noise.

Musical notes, however, in the form of a stave, fulfill the requirements set by the ECJ's
Sieckmann verdict that such representation must be clear, precise, self-contained, easily
accessible, intelligible, durable and objective. Thus only the sound signs registered by Shield
Mark BV along with a stave or other graphic representations meeting the requirements could be
upheld as trademarks.

Can Smells constitute the subject-matter of trademarks? See the case of Ralf Sieckmann.

The Effect of Trademarks

Trademarks once registered confers the owner with exclusive proprietary rights over the use of
the said sign, logo or phrase, and provides remedies to the owner for any infringement without
the consent of the owner of same. This is in accord with article 18(2) of the Constitution 1992.

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This is further reinforced by sec. 3 of Act 664, which provides thus: Registration of a trade mark
by any person confers an exclusive right to the use of the trade mark on the person. As a property
right therefore, it may be assigned, licensed or used as a collateral for loan. It must however be
noted that the mark must be used in relation to trade in goods and services. Where a mark has
been left dormant is susceptible to challenge on grounds of validity and may even be revoked for
lack of use.

Again, trademarks confers monopoly powers in the mark, for registration may be renewed
indefinitely (provided that the mark does not become generic and continues to be used);
however, it is a monopoly in the mark, and not in the goods and services for which it is used.
Other intellectual property rights permitting, competitors may trade in the same goods and
services, but may not adopt an identical or similar mark. The protection is, therefore, for the
proprietor’s reputation, not their product. Additionally, it is only a monopoly in the mark for the
purposes of trade, the mark is not removed from the public domain entirely.

The monopoly granted under trademarks seeks to prevent unfair competition and to promote
individual initiative by ensuring that unscrupulous sections of the public do not take unfair
advantage over the reputation of ones mark which is used to market his goods for the purposes of
also marketing his goods. This monopoly in my view is in accord with article 18 of the
constitution of Ghana, which grants every person the right to own property free from
interference, and the duty of the state under article 36(2) b to create an enabling environment that
fosters creativity and initiative development. Accordingly, if monopoly is not granted, traders
would not be protected as their marks would be used by other traders which would cause adverse
effects to their trade in that customers would likely be deceived.

JUSTIFICATIONS FOR TRADEMARKS

1. Trade mark law encourages creativity as a reward for investment. This is because
it guarantees producers that their efforts are being protected and would not be
clandestinely abused by others with impunity. As a result, people are motivated to
put in their best to ensure quality.

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 2. Trade Mark law encourages the production of quality goods and discourages the
production of inferior goods. Because consumers often associate the quality of a
particular product with its source or origin, trade marks which identify these
sources would encourage producers to produce quality goods for the purposes of
gaining reputation in the eyes of consumers. It encourages them to maintain and
enhance the standard for which they have become known, and supplies the
information necessary for informed consumer choices, proving mutually
beneficial to producer and customer.
3. It prevents unfair and unhealthy competition. Article 18 of the constitution, 1992
guarantees the right of every person to property. Accordingly, trademark law as a
form of property law prevents other traders from unfairly using the mark of
another without permission.

FUNCTIONS OF TRADE MARKS

A trade mark identifies the goods or services with which it is associated. Thus, it is inherent that
a mark must be distinctive, that is, able to be easily distinguished from the identifying features of
the products and services of others. Identifying products in this way is of small value to modern
consumers (often separated by long distances from that source and with little knowledge of it)
except in the indication that it also brings of a reputation for quality and reliability. The
identification of products enables traders to build and maintain reputations. It encourages them to
maintain and enhance the standard for which they have become known, and supplies the
information necessary for informed consumer choices, proving mutually beneficial to producer
and customer. The two prime functions of a trade mark are, first, to provide an indication of
source and, secondly, to guarantee quality. Both these functions can be isolated in a mark’s
‘capacity to distinguish’.

1. IDENTIFICATION FUNCTION

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One primary function of trade mark is the ability to indicate the source or the origin of the goods.
Thus, the marks serve as labels or indications for consumers to identify the origin of a particular
good, and thus gives them the capacity to distinguish goods of one brand from that of others.
This helps to prevent likelihood of confusion and the deception of customers to buying different
goods.

In Powell v. Birmingham Vinegar Brewery Co Ltd [ 1896] RPC 235 @ 250, the Court noted
thus: Persons may be misled and may mistake one class of goods for another, although they
do not know the names of the makers of either. A person whose name is not known, but whose
mark is imitated is just as much injured in his trade as if his name was known as well as his
mark. His mark, as used by him, has given a reputation to his goods. His trade depends
greatly on such a reputation. His mark sells his goods’’.

Again, Arsenal Football Club v. Matthew Reed [2003] RPC 696 C.A.; Arsenal FC is a football
club, which owns registered trademarks. Matthew Reed had sold souvenirs bearing the registered
trademarks of the Arsenal FC. In January 1999 Arsenal Football Club Plc started proceedings
against Matthew Reed. They elected that Reed had infringed certain of the registered trademarks
and had carried out acts of passing off. The European Court of Justice had considered whether
the third party use affected, or was likely to affect, the essential function of the mark, and had
found the third party use of the registered trademarks was liable to have an effect on the
functions of the registered trademark.

The Court in considering the functions of Trademarks noted that: ‘The essential function of a
trade mark is to guarantee the identity of the origin of the marked goods or services to the
consumer or end-user by enabling him, without any possibility of confusion, to distinguish
between the products or services from others which have another origin.

For the trade mark to be able to fulfil its essential role in the system of undistorted
competition…, it must offer a guarantee that all the goods or services bearing it have been
manufactured or supplied under the control of a single undertaking which is responsible for
their quality.

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That to make this a reality, the proprietor must be protected against competitors wishing to
take unfair advantage of the status and reputation of the of the trade mark by selling products
illegally bearing it.

2. Trademarks Guarantees the Quality of the Products

Because trademarks identify goods as emanating from a particular source, it encourages

producers to produce quality goods so as to maintain the status quo. It symbolises the qualities
consumers associate with certain products and services. The customer is assured that the
products or services measure up to expectation. And therefore, in order to maintain customers,
producers would maintain the standard by producing quality goods to maintain their good
reputation.

3. Trade Marks also perform advertising function. Trade marks provide an economical and
effective means of advertising, and are, therefore, very useful for promoting products.
And it is through advertising that reputations are created and maintained.

REGISTERATION OF TRADE MARKS

For a sign to qualify for trade mark protection, it must meet certain minimum requirements. First,
it must be of distinctive character and be capable of distinguishing goods of one brand from the
goods of another brand. Secondly, a sign would not be registered if it has some possible harmful
effect such as misleading character or it violates public order or morality or is deceptive.

In lieu of this certain signs are not considered the subject matter of trade marks.

1. Generic Signs

A sign is generic if it refers to a particular class, group or category. Such signs cannot form the
subject-matter of Trade Marks. Such signs are essential to trade and commerce and no one
should monopolize such signs. Accordingly, example include an application to register milk,
cosmetics, furniture, drink or coffee etc. as a trademark.

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 2. Descriptive Signs: Trademarks which describe characteristics of the product with which
they are used are unregistrable. excludes trade marks which consist exclusively of signs
or indications which may serve, in trade, to designate the kind, quality, quantity, intended
purpose value, geographical origin, the time of production of goods or rendering of
services, or other characteristics of goods or services’. The mark must consist
‘exclusively’ of the descriptive sign to be excluded, so that a mark comprising a
combination of descriptive matter with an added distinctive logo or name, for example,
may be registered. The description must be one used in trade (and not just by the general
public). The proviso that factual distinctiveness may be acquired through use applies (see
13.4.3), though the more descriptive the mark, the more evidence of factual
distinctiveness will be required before registration. This is backed by section 5(b) ii of the
Trade Marks Amendment Act, (Act 876).
3. Geographical Signs: Such marks convey to the consumer an association of the goods
with the geographic name or place of manufacture of the product(s) in question. Such
signs if allowed to go through registration is problematic; One person would acquire
exclusive right to use a geographical name to sell his or her goods.

LEGAL REGIME FOR THE REGISTRATION OF TRADE MARKS IN GHANA

In Ghana, in order to register for Trademark, an application for the registration of that sign or
mark must be made to the registrar in the prescribed manner accompanied with the payment of
the prescribed fee, as provided under section 4(1) of Act 664. Under section 4(2) of Act 876, The
application shall (a) be accompanied with a reproduction of the trademark and a list of the goods
or services for which the registration of the trademark is requested, using the International
Classifies-lion; and (b) state that the trademark is being used by the applicant or with the consent
of the applicant in relation to the goods or services or that the applicant has a bonafide intention
that the trademark should be used.

Under section 4(3), the Applicant may accompany the application with a declaration claiming a
priority of an earlier application, filed by the applicant or the predecessor in title of the Applicant
as provided in art 4 of the Paris Convention set out in schedule 1 of the Act, in or for a state party
to the convention, and in or for a state party to the WTO. The Registrar may require the applicant
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to provide within the prescribed time a copy of the earlier application certified as correct by the
office with which it was filed. The significance of this declaration is that it gives priority to the
Applicant’s application at the filing date of the earlier application, and not the subsequent one. In
that case, the applicant may not be required to go through all the application processes as are
required under the Act. However, where the earlier application does not comply with section 5 of
Act 876, then it may be declined registration. Also, sec. 4(4) of Act 664 provides that where the
Registrar finds that the requirements under subsection (3) have not been met, the declaration
shall cease to have effect.

Upon a successful registration, the trademark is protected for a period of ten years from the date
of the filing of the application for registration. And may be renewed for another period of 10
years upon the payment of the prescribed fee. However, a grace period of six months is given
for the payment of the renewal fee after the expiration of the ten-year period. This is provided in
sections 10 and 11 of Act 664. Failure to comply with this requirement would lead to a
revocation of the registration and thus the mark would now lack protection and any person can
make use of same without been liable.

During the period of the ten years, no person can make use of the mark in relation to any goods
or service without the consent of the owner, and any such act would amount to infringement, to
which the owner may have a cause of action as provided in section 9 of Act 664.

GROUNDS OF REFUSAL TO REGISTER AN APPLICATION FOR TRADE MARK

Where an application is made for the registration of a trademark, the registrar may refuse to
register same on various grounds which have been discussed below.

The grounds of refusal to register a trademark have been set out in section 5 of Act 876. Under
section 5(a) of Act 876, it is impossible to register a trade name or sign that belongs to the public
domain except where the trade name or sign has become accepted as a trademark for the goods
or services for which they are claimed. Under the interpretation section of the Act, ‘‘trade name’’
is defined as a name or designation which identifies and distinguishes an enterprise. Under the

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old Act 664, it was impossible to register a tradename as a trademark. However, under Act 876,
where the trade name has become known or associated as a trademark for the goods acclaimed,
then it may be registered as a trademark.

Another ground for refusal to register a trade mark is where the mark is incapable of
distinguishing goods of one enterprise from the goods and services of another enterprise or the
mark lacks distinctive character. If the mark that is used cannot distinguish goods and services of
one origin from the goods and services of another origin, or where the mark itself cannot be
distinguished from earlier registered marks, then it constitutes a ground for refusal to register.

In determining whether or not a latter mark is identical to an earlier mark, it is necessary to

consider whether it produces, without any modification or addition, all the elements

constituting the trade mark or where viewed as a whole, it contains differences so

insignificant that it can go unnoticed by an average consumer.

The case of LTJ Diffusion v. Sadas [2003] FSR 608, dealt with what constitute an identical sign.
In that case, LTJ Diffusion, a French company which produces and sells clothing under the name
“Arthur”. “Arthur” is registered as a figurative trade mark in distinctive handwritten form in
France for clothing. SADAS operate a mail order business selling clothing for children including
under the name “Arthur et Félice”. That name is registered by SADAS as a word mark in France,
and the form in which it is used did not reproduce the handwritten script of the LTJ Diffusion
mark.

LTJ Diffusion objected to SADAS’s use of their mark before the Tribunal de Grande Instance in
reliance of the provision of the provision of the French Intellectual Property Code which
corresponds to Article 5(1) (a). (It had successfully opposed the registration in France of the
mark “Arthur et Nina” by another company.)

The Advocate General’s Opinion

Advocate General Jacobs stated that the term “identical” should be given a strict interpretation.
The protection afforded to trade mark owners under the Directive and the Regulation was
“predicated on the existence of a likelihood of confusion, proof of which is superfluous” only in

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circumstances were the mark and the sign (in the case of infringement) or both marks (in the case
of registrability) and the products covered are identical.

Article 5(1)(a) of the Directive (or Section 10(1) of the TMA) will only assist the trade mark
owner if his mark has been reproduced without any addition, omission or modification other than
those which are either minute or wholly insignificant. In assessing this, the court must make a
global assessment of the features of the mark and the sign and the overall impression created by
them, in particular by their distinctive and dominant components, so as to determine whether
they would be perceived by the average, reasonably well-informed, observant and circumspect
consumer (that increasingly familiar fictitious construct of the ECJ) as identical.

Also, in Reed Executive PLC v. Reed Business Information [2004] EWCA Civ 159, Reed
Business Information, a publisher, appealed against a finding that it had infringed the Claimant
employment agency’s registered trademark. The Claimant had registered the word ‘Reed’ in
Class 35 for employment services in 1986 and advertised jobs on its website. The Defendant
publisher in 1999 set up a jobs dedicated website at totaljobs.com. The Claimant contended that
all versions of the website which used the word ‘Reed’ whether visibly or in metatag form
amounted to trade mark infringement and passing off. The Defendants had never used the word
‘Reed’ alone but used it in logos and as part of the composite ‘Reed Elsevier’ and Reed Business
Information. At first instance, it was held that there was trade mark infringement and there was
no ‘own name’ defence available under s.10(2) of the Trade Marks Act 1994 except in relation to
minor matters (invoices and use at a trade show). The Defendants appealed.

Whether the prohibition against identical reproduction of a mark covered only reproduction of
that mark without addition or omission (i.e. the word ‘Reed’ alone) or whether it could extend to
reproduction of the mark where new signs were added. The Court held that: (1) There was no
identity of mark under s.10(1) as the Defendants were using the composite words ‘Reed
Elsevier’ and ‘Reed Business Information. The additional words would not go unnoticed by the
average consumer. The criterion of identity of the sign under Art 5.1 of the Trade Mark Directive
must be interpreted strictly. LTJ Diffusion v Sadas Vertbaudet Case C-291-1000 (Arthur et
Felice) applied; (2) the Claimant had failed to show confusion.

It is submitted that the Court should have had regards to the substance, and object of the mark
and the effect it was going to produce rather than the procedure adopted by the defendants.

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Because, even though the procedure was different the overall effect was that it sought to provide
employment for the public, as such there was thus the likelihood of confusion to the reasonably
objective customer.

Another ground for refusal of registration is where the mark or sign seeks to designate the
characteristics of the goods or services or shapes that constitute the nature of the goods or shapes
of the goods or of their packaging that are technically necessary. This is provided under section
5(b)ii of Act 876. It is important to note that trademark protection is related only to the sign or
mark that identifies the source of a particular good or service. The protection is not to the good
or service itself. Accordingly, where we have a mark or sign which is merely a description of the
characteristics of the goods or services in question, or shapes that constitutes the nature of the
goods, it constitutes a ground for refusal to register. These are known as descriptive signs. In this
regard, in Re- Cocacola, the Court declined the registration of the shape of cocacola bottle was
not distinctive in anyway.

Another ground for refusal of trademark registration is where the sign or mark is contrary to
public policy. Public policy or interest under article 295 of the Constitution is any benefit that
enures or is intended to enure to the whole of the Republic of Ghana. Any sign or mark that is
inimical to the public morals, values and accepted norms may not be registered by the registrar
on grounds of public policy. As a result, the following marks have been refused registration on
grounds of public policy:

• Hallelujah Trade Marks [1976] RPC 605;

The Registrar held that given the religious connotations of the word ‘‘Hallelujah’’ and its
meaning it was inappropriate to allow it as a trademark for women’s clothing.

• French Connection V. Sutton [2000] ETMR 341;

TM ‘Fuck’ which was registered was revoked. The judge expressed considerable distaste of the
word as a trademark.

• Ghazillian’s TM Application [2002] RPC 628;

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An application for the registration of ‘Tiny Penis’ for clothing was refused because the trade
mark would offend the moral principles of the society.

• The next ground under which a trademark registration would be refused is where it is
likely to mislead the public or trade circles with particular reference to the geographical
origin of the goods or services, their nature or characteristics such as the kind, quality,
intended purpose, the: time of production of the goods or rendering of the service. Thus,
if the mark is such that it is likely to deceive the consuming public as to the nature of the
goods with reference to geographic origin, or the character of the goods in relation to its
quality, or the class, then it would constitute a ground for refusal to register. This can be
seen in three main areas namely; This is provided in sec. 5d of Act 876.

• Goods and services are of a particular class; Thus, whether or not the sign seeks to
parade the goods as belonging to a particular class when in fact they are not.

• It is from one specific place (origin): Whether or not the mark or sign seeks to brand the
goods as belonging to a particular geographical origin when in actual fact, it is just a
spurious imitation.

• Made of a specific material.

For instance, in Re Royal Worcester Corset Co’s Application [1909] 26 RPC 185, the facts of
which were as follows:

On the 11th of August 1908 the Royal Worcester Corset |Company, an American 5 Company, of
Worcester, Massachusetts, U.S.A., manufacturers of corsets, made a special application under
paragraph 5 of Section 9. of the Trade Marks Act 1905 for registration of the words" Royal
Worcester" in Class 38 as their Trade Mark in respect of corsets. The defendants raised an
objection to the effect that the use of Royal Worcestor was likely to deceive the public that the
goods have royal patronage. It was held thus: The application failed to distinguish between
corsets made by the company in Worcester, Massachusetts and other corsets.

Under section 5(e) of Act 876, a Trade Mark shall not be registered if it is a specially protected
emblem of the state or international convention unless so authorized. This was earlier provided

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in regulation 6(2) thus: (2) The Registrar may refuse to accept any application for registration of
a mark upon which there appears:-

(i) the representation of the head of state or any member of Government; or

(ii) the representation of the Ghana Coat of Arms and the national Flag or any representation

thereof so nearly resembling any of them as to be likely to mislead or to cause confusion.

Under section 5(f) of Act 876, an application for registration of a Trademark would be refused
where it is identical to or confusingly similar to or constitutes a translation of a trade mark or
trade name which is well-known in the country for identical or similar goods or services of
another enterprise or the trade mark is well known and registered in the country for goods or
services which are not identical or similar to those under application but the use of the trade
mark will indicate a connection between those goods or services and the owner of the well-
known trade mark and the interests of the owner of the well-known trade mark are likely to be
damaged by the use of the trade mark. This provision is in accordance with article 6bi of the
Paris Convention and Article 16(3) of the TRIPS Agreement.

The thrust of this provision is to the effect that first, there must have been an earlier mark which
is well known to the public or has gained the notoriety so required in relation to a particular good
or service of a particular enterprise. Secondly, the latter mark seeking registration must be
identical to the well-known mark or constitute a translation of same for similar goods and
services in the country. Or even where the goods are not similar, the use of the latter mark would
cause a close connection between the various goods so as to cause damage to the interest of the
owner of the earlier mark.

In effect, first the earlier mark must have gained reputation. Thus, it is incumbent to establish
that the earlier mark has gained such notoriety or secondary meaning that a large section of the
public have come to associate that said mark with specific goods and services, and such that its
use by another person would likely cause confusion to the public, thereby causing secondly,
damage to the owner of the earlier trade mark.

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In the case of General Motors vs Yplon [2000] RPC 572 ECJ, the Court laid down the test for
determining whether or not a particular trademark has gained reputation. In that case, the
plaintiffs, were a corporation and dealers in motor cars registered under the laws of United States
of America, and were the proprietors of the Trade name, “Chevy” since October 18, 1971. The
Respondent also from 1998 started making use of the said mark Chevy in relation to detergents,
laundering etc. The Plaintiff’s sued in the Commercial division of the Belgium Court. The matter
was referred to the European Court of Justice. The question was whether the plaintiff’s mark was
of such a reputation that the use by the Defendant’s would cause a connection and thus lead to
detrimental results? The European Court of Justice held thus:

In regards to Marks with Reputation, reputation as defined by the Concise Oxford English
Dictionary is to the effect that '(1) what is generally said or believed about a person's or thing's
character or standing ...; (2) the state of being well thought of; distinction; respectability; ... (3)
credit, fame, or notoriety. The Court noted that it is in general difficult to establish a broad test
regarding what is meant by a trade mark gaining reputation. However, what is relevant is
whether the said mark has become well-known or gained notoriety in relevant sectors of the
public. Accordingly, the following pointers were given:

1. Knowledge and recognition of the mark in relevant sectors of the public

2. The duration of the use of the mark
3. The geographical area of the use of the mark
4. The scale and the scope of investment employed in promoting the mark.

After ascertaining that the mark has gained reputation, it is now incumbent to consider whether
the latter mark is identical or an imitation of this well-known mark and used in relation to
identical goods or whether know the goods are dissimilar, the use of same may cause a
connection between the two which may likely injure the owner’s interest. Accordingly, where
there is likelihood of damage, then the mark would not be registered.

In Inlima’s Application v. Addidas [2000] RPC 661;

Adidas opposed the registration of a three-dimension device depicting a football with three
stripes for alcoholic drinks. The opposition succeeded. The Court held that the public might think

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there is a trade connection between them as the mark was so close the registered senior mark and
hence benefited from Adidas’s reputation. The Court thus opined that whether or not the use of
the mark should be disallowed should be determined based on the likelihood of damage or the
detriment that would be caused to the owner of the mark by its use by the latter mark.

Again, in Sheimer MSD TMA v. Visa International Service Association [2000] RPC 484, The
opponents owned a registration for the mark VISA in Class 36 in respect of credit card and
financial services and filed evidence to show the extent of their massive reputation. They also
filed declarations from three pharmacists who stated that if they saw the mark VISA used in
relation to condoms they would assume some association with the opponents. The Applicants
sought to register a mark similar to that of the opponents, by the name Visa for condoms. The
Court noted that the respective marks were identical and that the respective goods and services
were dissimilar. He also noted the opponent’s significant reputation in their VISA mark and the
fact that its use in relation to credit cards would be widespread and used in relation to a wide
range of goods and services. In the light of the evidence before him the Hearing Officer decided
that the public would be likely to assume a connection with the opponents if the applicants used
the mark in suit; also that such use would have a detrimental effect on the distinctive character of
the opponents mark. Opposition succeeded on this ground.

Lastly, in Pfizer Ltd v. Eurofood Link [2001] FSR 17, The plaintiff owned the mark Viagra for
pharmaceutical substances. The defendant was also selling aphrodisiac drink under the mark
Viagrene. The court held that the defendants' conduct was designed to take unfair advantage of
the plaintiff’s reputation.

Lastly, under article 5(f) of Act 876, an application for registration would refused where the
trade mark is identical to a trade mark of another owner already on the register or identical to a
trade mark the subject of an application with an earlier filing or priority date for the same goods
or services or closely related goods or services or if it resembles that trade mark so closely that it
is likely to deceive or cause confusion. This ground is to the effect that where the trade mark
sought to be registered is similar to a trade mark already on the register and in relation to
identical goods and services or closely related goods and services such that the registration of the
latter mark would likely cause confusion, same would not be registered. The likelihood of

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confusion relates to whether the public would likely associate the latter mark with the earlier
mark therefore causing them to believe that the latter mark relates to the earlier mark as well.

Accordingly, in the case of Sabel v. Puma [1988] RPC 199., the Court noted that likelihood of
association of goods, is one form of likelihood of confusion. This could be direct or indirect. It is
direct where the goods are identical. Or that where the public would likelihood associate a
particular good or service with another good or service depending on the impression they create.

In determining whether or not there will be likelihood of association the Court in the Sabel case
laid down a test thus: That one would have to undertake a global consideration of the two marks
aurally, visually, and conceptually. Aurally would be the manner or mode of pronunciation
whether they are similar so as to occasion likelihood of association and hence likelihood of
confusion. The next is the physical appearance whether the two marks are physically similar.
Conceptual consideration deals with whether the marks use images with analogous semantic
content, such that it would likely create confusion in the minds of the public. In effect, these
three test depends on the overall impression of the public and whether there would be a
likelihood of confusion.

The Second test after the determination of whether the earlier and the latter marks are similar is
to consider whether the goods are similar. This test was laid down in Canon v. Metro-Goldwine
[1999] 1 CMLR 77 . This case has held that even if the marks are similar, it must still be shown
that the goods and services are similar. Canon further states that all relevant factors must be
taken onto consideration. That is;

 What is the nature of the goods or services being provided?

 Who are the end users of the goods and services?

 What is the method of use of the goods and services?

 Are the goods in competition or they complement each other?

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Lastly, the Court in Llyod Schufabrick v. Handel, the court noted that after the determination of
whether the marks are similar and whether goods are similar, it is then necessary to consider
whether there is a likelihood of confusion. Mere similarity alone does not serve as a bar to
registration of a mark in the absence of likelihood of confusion. Accordingly, the Court held
flouscently thus: the more similar the goods or services covered and the more distinctive the
earlier mark, the greater will be the likelihood of confusion. In determining the distinctive
character of a mark and, accordingly, in assessing whether it is highly distinctive, it is
necessary to make a global assessment of the greater or lesser capacity of the mark to identify
the goods or services for which it has been registered as coming from a particular
undertaking, and thus to distinguish those goods or services from those of other undertakings.
In making that assessment, account should be taken of all relevant factors and, in particular,
of the inherent characteristics of the mark, including the fact that it does or does not contain
an element descriptive of the goods or services for which it has been registered. It is not
possible to state in general terms, for example by referring to given percentages relating to the
degree of recognition attained by the mark within the relevant section of the public, when a
mark has a strong distinctive character.

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