Section s3(1) of the Trade Marks Act 1994 (the Act) states that:
3. - (1) The following shall not be registered -
(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) 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 of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.
In this provision the Act (and in the corresponding provision in the Community Trade Mark Regulation, art7) the relevant bodies apparently allow descriptive and/or non distinctive and/or non-distinguishing signs to be registerable.
However the prior grounds under which the signs are examined, namely all those just listed, provide a series of hurdles. In particular, since Bach Flower Remedies an objection under s3(1)(a), that the sign does not meet the requirements of s1(1) of the Act, in particular that the sign is not capable of distinguishing the goods/services of one undertaking from those of another, will fail the registration requirements.
And this is not overcomable through acquired distinctiveness. In Bach the sign had become descriptive therefore was no longer valid as it was not capable of distinguishing the goods of the proprietor from those of Herbal remedies, also producing flower remedies based on Bach. This is although it had become so through the actions/inactions of the proprietor or with his consent.
Rather than through s46(1)(c) for revocation on these grounds, the case was decided on the basis of invalidation under s3(1)(a) however.
Trademarkroom