5. Pertinencia y Aplicación de las Causales de Pérdida de Fuerza Ejecutoria
5.7. Pertinencia de las Causales de Pérdida de Fuerza Ejecutoria
Kenya’s Trade Marks Act provides that a mark:
88 Webster & Page South African Law of Trade Marks para 3.20.
89 See discussion in chapter 4 part 4.4.2.
90 Section 34 (1) is an example of a provision that protects the secondary commercial functions of a trade mark:
Beecham Group plc v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA) para 8.
91 Rutherford ‘The Trade Marks Act in its International context’ 3.
92 This is whereby the trade mark was required to indicate a connection in the course of trade with a particular person. There should be an association with the goods in the course of their production and preparation for the market. It is submitted that this explanation seems to indirectly point out to the origin function. Webster
& Page South African Law of Trade Marks par 3.21.
93 Webster & Page South African Law of Trade Marks para 4.5. See also chapter 4 part 4.2.1.
94 See chapter 4 part 4.2.1.
‘includes a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two-dimensional or three-two-dimensional form.’95
It is significant to note that no actual definition of a mark is given. The above provision gives examples of what amounts to a mark. WIPO notes that trade mark laws should not attempt to draw up an exhaustive list of signs or ‘marks’ since virtually any mark that serve to distinguish goods from other goods is capable of constituting a trade mark.96 If examples of
‘marks’ are given, they should accordingly be a practical illustration of what can be registered, without being exhaustive. It is noteworthy that there is no specific requirement for a ‘mark’ in the above provision.
A trade mark means:
‘…a mark used or proposed to be used-
(a) In relation to goods for the purpose of indicating a connection in the course of trade between the goods and some person having the right either as proprietor or as licensee to use the mark, whether with or without any indication of the identity of that person or distinguishing goods in relation to which the mark is used or proposed to be used from the same kind of goods connected in the course of trade with any person;
(b) In relation to services for the purpose of indicating that a particular person is connected, in the course of business, with the provisions of those services, whether with or without any indication of the identity of that person or distinguishing services in relation to which the mark is used or proposed to be used from the same kind of services connected in the course of business with any other person.’97
It can be deduced from the above that there should be a ‘mark’ and the mark should be used or proposed to be used in relation to goods for the purpose of indicating a connection in the course of trade between the goods and some person having the right either as proprietor or as licensee to use the mark. Secondly, the mark should be used or proposed to be used ‘in relation to services for the purpose of indicating that a particular person is connected, in the course of business, with the provisions of those services.’ Therefore, a mark can be used either on goods or services. When a mark is used on services it is referred to as a service mark.98
95 Section 2 (1) of Kenya’s Trade Marks Act Chapter 506 as amended by the Trade Marks Amendment Act of 2002 available at http://www.wipo.int/wipolex/en/text.jsp?file_id=194550 (accessed 8 May 2013).
96 WIPO Introduction to Intellectual Property: Theory and Practice (1997) 186.
97 Section 2 (1) of Kenya’s Trade Marks Act Chapter 506 as amended by the Trade Marks Amendment Act of 2002 available at http://www.wipo.int/wipolex/en/text.jsp?file_id=194550 (accessed 8 May 2013).
98 Baroncelli, Fink & Javorcik ‘The global distribution of trade marks: Some stylised facts’ (2005) Journal of Word Economy 765. See chapter 4 part 4.2.1.
The central feature in this definition appears to be that the purpose of the trade mark should be to ‘indicate a connection’ in the ‘course of trade’ between the goods or services and the proprietor. The words ‘indicate connection’ between the goods and some person having the right either as proprietor or as licensee to use the mark, implies the origin function.99 It means that a trade mark must indicate its source. It does not mean that it must inform the consumer of the actual person who has manufactured the product or even the one who is trading in it.100 In other words the consumer does not need to know the name of the manufacturer for a trade mark to fulfil its purpose of indicating origin.101 It seems a mark does not necessarily need to indicate the identity of that person or distinguish goods or services in relation to which the mark is used or proposed to be used from the same kind of goods connected in the course of trade with any person. Although the emphasis seems to be on the origin function, it is argued that the definition of a trade mark comprises two aspects which are interdependent and for all practical purposes should always be looked at together.102 The origin function presupposes that a trade mark distinguishes the goods or services of the given enterprise from those of other enterprises.
It is only when a trade mark allows the consumer to distinguish a product sold under it from the goods of other enterprises that it can fulfil its origin function.103 This shows that the origin function and distinguishing function cannot be separated. WIPO notes that for practical purposes one can simply rely on the distinguishing function of a trade mark.104 Service marks fulfil basically the same origin-indicating and distinguishing function as trade marks do for goods.
It appears axiomatic that the basic premise of a trade mark is that it should distinguish the goods or services of one enterprise from those of other enterprises. Colston and Galloway hold the same view as they contend that ‘only a sign which is “capable of distinguishing”
may be a trade mark.’105 They also concur with Hertzog in their argument that the essence of a trade mark is in identifying goods or services.106 If a sign does not distinguish, it
99 The mark should also fulfil the origin function even when used in relation to services.
100 WIPO Introduction to Intellectual Property 184.
101 It is sufficient that the consumer can trust in the given enterprise which manufactures certain goods or provides a specific service, even though it not necessarily known to him.
102 WIPO Introduction to Intellectual Property 184.
103 WIPO Introduction to Intellectual Property 184.
104 WIPO Introduction to Intellectual Property 184.
105 Colston & Galloway Modern Intellectual Property Law (2010) 599.
106 Hertzog Functional Theory in Trade Mark LLD thesis 34.
cannot identify the source and what that means is that the public may not be able to differentiate the goods or services of one enterprise from those of another.107