22.4. Trade marks considered sufficiently inherently adapted to distinguish

Date Published

If the trade mark as a whole is not one which other traders are likely to desire to use without improper motive in connection with their own goods or services, it will have sufficient inherent adaptation to distinguish (prima facie capable of distinguishing) such that it meets the requirements of section 41.

4.1 Examples of trade marks considered sufficiently inherently adapted to distinguish

The following are examples of trade marks that are considered to be sufficiently inherently adapted to distinguish and are therefore acceptable without evidence of use:

  • SURNAMES that are not commonplace (see paragraph 16)
  • PERSONAL AND COMPANY NAMES that are not commonplace (see paragraphs 17, 18 and 19)
  • SUPERSEDED GEOGRAPHIC NAMES that have no connection with the goods such as BYBLOS (class 25) which is the ancient name for the Lebanese town of Jubayl (see paragraph 15.4 below)
  • WORLD OR CITY MARKS which contain a reference to an attribute of the goods or services such as SPEED WORLD, COMFORT CITY (see paragraph 13.5)
  • MOST COINED WORDS such as SURELOCK (Class 12), CLICKFAST (Class 6), TRAKGRIP (Class 12)
  • EXPRESSIONS not in common use in respect of the goods and/or services: OFF THE WALL (Class 25), CHOOKEY POOH (Class 1), THE COOL CONDITIONERS (Class 31), MUSCLE MACHINE (Class 28), PORKY BITS (Class 29)
  • UNLIKELY GRAMMATICAL CONSTRUCTIONS particularly those that incorporate a misspelling such as SHOPRITE (Class 42), BESAFE (Class 9), BEEF GRO (Class 5), GROWOOL (Class 1), SAFEVUE (Class 12), BI-LO (Class 42)
  • SLOGANS with only indirect reference such as COLOUR ME BEAUTIFUL (Class 3), PARDON OUR SCAFFOLDING (Class 6)

Amended Reasons

Amended Reason Date Amended

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