Section 3(1)(b) of the Trade Marks Act 1994 (the Act) states that:

3. - (1) The following shall not be registered -

(b) trade marks which are devoid of any distinctive character,

As discussed by Laddie J in the Arsenal football club case, the insignia or name of a football club (in that case) is in principle capable of being distinctive despite its other non-trade mark purposes, for example demonstrating allegiance.  However it must serve the essential function of denoting trade origin.  Following Linde this means the mark must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from another undertaking’s product.

In essence s1(1) as repeated in s3(1)(a) needs satisfying primarily as the sign must be a sign and capable of distinguishing the goods as those of the undertaking.  S3(1)(b) then becomes relevant.  In the Arsenal case the mark was not devoid of distinctive character as it represented the source of the goods and connoted a badge distinctive of trade origin.  This follows the ECJ Phillips definition of distinctiveness.

This in contrast to another ruling, on the emblem on retro Brazilian football shirts, which served as a badge of nostalgia.  Mann J in the judgment in the High Court drew an analogy with famous names of celebrities whereby the name is so inherently famous that it would be difficult for the name alone to connote a particular trade origin. 

Questions are raised by these matters, particularly concerning the overlap between s1(1) and s3(1)(b) and whether such reasoning means that to denote a particular trade source is analogous with being distinctive of trade origin.  If Arsenal is in addition to other purposes capable of identifying goods as originating from a particular undertaking (s3(1)(a)/s1(1)), and is distinctive to goods (3(1)(b)) purely because the undertaking is Arsenal, as a badge of trade source surely this would mean that only a sign which is used by an eponymous proprietor is valid?

Trademarkroom