without modification applied it as an English noun in the course of trade and in the trademark
law sense and has applied it descriptively as a component part to a more complex mark which is
in totality distinctive of the goods and services for which registration is sought. The whole
controversy was answered by section 26 of the Trademarks Act which provides that the
trademark application which incorporates matter that is, to the provision of services of the
description or otherwise of a non-distinctive character qualifies for registration provided that it is
appropriately disclaimed. The word itself is incapable of been considered as being distinctive in
relation to the goods and services. Likewise any similarity between marks which depends solely
upon such a word cannot act as being relevant confusing subject matter when considering a
likelihood of confusion.
The Appellant's Counsel further submitted that there was no similarity between the Appellant's
and Respondents trademarks.
Counsel for the Appellant reiterated submissions that the Registrar had a duty to consider the
trademarks as a whole in making an assessment of the issue of whether there was similarity
between the marks. He added the case of Bimbo versus Office for Harmonisation in the
Internal Market C – 591/12 P.
Furthermore the Appellants Counsel submitted on the question of the importance of disclaimer
and registration in Part B.
The Appellant‘s Counsel submitted that the Appellants trademarks qualify for registration in
their own right under Part B of the register on account of being appropriately disclaimed in
accordance with section 26 of the Trademarks Act.
The Assistant Registrar overlooked
disclaimers. Section 10 (2) of the Trademarks Act provides that a trademark shall be registered
in Part B of the register where it is capable of distinguishing services, or where the trademark is
supposed to be registered subject to limitations in relation to use within the context of the
registration. Section 19 of the Trademarks Act provides that where a trademark contains matters,
the provision of services of that description or otherwise of non-distinctive character, the owner
shall disclaim the right of exclusive usage to all or a portion of the trademark to which the
proprietor is not entitled. Part B extends registration to marks which lack sufficient
distinctiveness to be included in part A which requires inherent distinctiveness. The disclaimer