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TRADE MARKS ACT 1994 No. 156 of 1994 - SECT 40 Trade mark not distinguishing applicant's goods or services

TRADE MARKS ACT 1994 No. 156 of 1994 - SECT 40

Trade mark not distinguishing applicant's goods or services
40.(1) In this section, a reference to the use of a trade mark by an applicant
for the registration of the trade mark includes a reference to the use of the
trade mark by a predecessor in title (if any) of the applicant.

(2) An application for the registration of a trade mark must be rejected if
the trade mark is not capable of distinguishing the applicant's goods or
services in respect of which the trade mark is sought to be registered
("designated goods or services") from the goods or services of other persons.

(3) In deciding the question whether or not a trade mark is capable of
distinguishing the designated goods or services from the goods or services of
other persons, the Registrar must first take into account the extent to which
the trade mark is inherently adapted to distinguish the designated goods or
services.

(4) Then, if the Registrar is still unable to decide the question, the
Registrar is to take into account:

   (a)  the extent to which the trade mark does in fact so distinguish the
        designated goods or services because of any or all of the following:

        (i)    the use made by the applicant of the trade mark;

        (ii)   the extent to which it is inherently adapted to distinguish the
               designated goods or services;

        (iii)  any other circumstances; or

   (b)  the extent to which the trade mark will in fact so distinguish the
        designated goods or services because of any or all of the following:

        (i)    the use made, and likely to be made, by the applicant of the
               trade mark;

        (ii)   the extent to which it is inherently adapted to distinguish the
               designated goods or services;

        (iii)  any other circumstances; or

   (c)  if the applicant has not used the trade mark-the extent to which the
        trade mark will in fact so distinguish the
        designated goods or services because of either or both of the
        following:

        (i)    the intended use of the trade mark by the applicant together
               with the extent to which it is inherently adapted to
               distinguish the designated goods or services;

        (ii)   any other circumstances.