TECHNICAL DISTINCTIVENESS AND THE STEP-BY-STEP APPROACH

• Date: 01 December 2020
• Author: Paul McCLELLAND1 LLB (Hons), LLM (Res); Faculty, IP Academy, Singapore.
• Published date: 01 December 2020

In the practice of Singapore's trade mark law, “technical distinctiveness” is currently a fashionable term. But despite its clear origins and meaning, its significance within the analytical frameworks for comparing trade marks is not easily discernible. Some of these difficulties may be attributable to a continuing struggle with the conceptual clarity of the so-called “step-by-step approach” to comparison of trade marks. This discussion will examine how “technical distinctiveness” is used in the cases and, in doing so, will propose some areas in which the conceptual clarity of the law could be improved.

I. Introduction

1 Words, terms, and phrases go in and out of fashion. This is particularly true in the legal industry.

2 In the practice of Singapore's trade mark law, “technical distinctiveness” is currently a fashionable term. Its introduction was recent, and it is not found in the Trade Marks Act.2 It originated in the England and Wales Court of Appeal decision in Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc3 (“BUD”), and was imported into Singapore law in the landmark case of Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc4 (“Staywell”). Since its introduction, technical distinctiveness has established itself in the vocabulary of the Registry and the courts as shorthand for the ability of a trade mark to function as a badge of origin.5

3 Despite its clear origins and meaning, the significance of technical distinctiveness within the analytical frameworks for comparing trade marks is not easily discernible. There are a number of factors which could potentially contribute to a mark's technical distinctiveness. The Registry and courts have variously rejected or included these factors depending on context. The effects of having (or not having) technical distinctiveness also vary.

4 Some of these difficulties are likely attributable to a continuing struggle with the conceptual clarity of the so-called “three-step” or “step-by-step approach” to comparison of trade marks.6 For instance, a few decisions talk of “maintaining” that conceptual clarity in order to justify drawing excluding or including matters when considering a mark's technical distinctiveness in a particular context.

5 This discussion will examine how “technical distinctiveness” is used in the cases. In doing so, it will hopefully shed some light on some issues that have arisen in applying the “step-by-step approach”. In particular, it will suggest that the marks-similarity assessment should be carried out in the abstract — that is, without reference to the nature of the actual goods or services claimed in the applications, and without reference to any acquired distinctiveness, both of which ought to be considered at the likelihood-of-confusion stage. It will also suggest that technical distinctiveness is relevant to the assessment of whether variations of a mark in actual use differ in distinctive character from the registered mark for the purposes of non-use revocation.

II. Technical, inherent, and acquired distinctiveness

6 As mentioned above,7 the origins of the term “technical distinctiveness” lie in a passage from the England and Wales Court of Appeal decision in BUD. Lord Walker said as follows:8

It is not necessary to go far into the authorities on trade mark law to see that the term ‘distinctive’ is used with two different shades of meaning. Sometimes it has its normal, non-technical meaning, with a flavour of that which is unusual (or stands out in a crowd) and is therefore easy to recognise and to remember. Sometimes it is used in a more technical sense, in contrast to ‘descriptive’ … Purely descriptive or laudatory words, however striking and memorable, cannot normally be distinctive in this sense … But they may in some circumstances acquire distinctiveness … Moreover descriptive words can be made distinctive through … a ‘capricious addition’.

7 All indications suggest that Lord Walker's “technical sense” was just an illustration of existing principles in his own words. He observed that the points he was making were “uncontroversial”, even “pedestrian”. They were used merely to “show what is the right approach” to the language of s 46(2) of the UK Trade Marks Act 19949 (use in a form differing in elements that do not alter the distinctive character of a mark).10 He did not mention the distinction again throughout the judgment. Neither the above passage or the term “technical distinctiveness” appear to have been mentioned in subsequent decisions of the UK courts or those of other Commonwealth countries.11

8 In Singapore, technical distinctiveness was first discussed in the context of identifying the dominant and distinctive elements of a mark.12 Elaborating on Lord Walker's insights, Sundaresh Menon CJ said in Staywell that “technical distinctiveness” refers to distinctiveness in the sense used by trademark lawyers, namely, the ability of a mark to distinguish the goods or services of one particular trader from those of another.

9 But he also said that it “usually” stands in contradistinction with descriptive words.13 This is interesting because it marks a slight departure from the Lord Walker definition. It suggests that the term “technical” distinctiveness may not always simply be shorthand for “non-descriptive”.

10 This leaves it open for technical distinctiveness to take into account those elements of a mark that are less likely to be considered

as badges of origin because they are common or immaterial, despite the fact that their inability to distinguish goods or services of one trader does not arise because of an extraneous factor like the nature of the goods or services in the application. Other than non-descriptiveness, the factors that contribute to the ability of a mark to distinguish goods or services for present purposes can generally be gleaned from s 7(1) of the Singapore Trade Marks Act. A mark may not be “technically” distinctive where it is a generic term, a simple shape, comprises other matters that would not readily be understood as an indicator of origin by ordinary consumers, or for any other reason it falls foul of that section.

11 The term “technical distinctiveness” is related to, but distinct from, another term that is not found in the Singapore Trade Marks Act: “inherent distinctiveness”. The latter is also used somewhat loosely,14 but it is generally understood to refer to the ability of a mark or component of a mark to function as a badge of origin without the need to educate the public that it is one (the focus of the enquiry usually being on the emphasised part).15 Inherent distinctiveness may, in some circumstances, require consideration of the character and nature of the mark in the context of the goods or services for which registration is sought,16 but again it has a broader meaning.

12 Inherent distinctiveness is used in contradistinction to “acquired” distinctiveness. “Acquired distinctiveness” refers to a mark or element of a mark which was originally devoid of distinctive character, but has since acquired distinctiveness through use. In other words, if a mark is not inherently distinctive, and it has not acquired distinctiveness through use, then it does not (yet) possess distinctive character.

III. Lack of consistency inter se

13 All of the above terms are likely to be familiar ground for Singapore's intellectual property (“IP”) practitioners. But despite the relative ease with which the terms can be defined, it becomes quickly apparent from the cases that the usage of the terms “technical”, “inherent”, and “acquired” distinctiveness has not always been consistent inter se.

14 First, in Staywell, “technical” distinctiveness was used in conjunction with, but also independently from, “inherent” distinctiveness:17

While the components of a mark may be inherently technically distinctive, ultimately the ability of the mark to function as a strong badge of origin must be assessed by looking at the mark as a whole. Conversely, the components of a mark may not be inherently distinctive, but the sum of its parts may have sufficient technical distinctiveness. [emphasis added]

15 The court's logic is undoubtedly sound, but it is respectfully submitted that the form in which it has been expressed has the potential to cause confusion. There is no obvious reason that the words “technical” and “inherent” should be omitted from (respectively) the second and third highlighted instances above.

16 A neater explanation was provided by the learned IP adjudicator in The Polo/Lauren Co, LP v United States Polo Association18 (“Polo (2015)”). It would suggest that “inherent” and “acquired” distinctiveness are sub-sets of the broader concept of “technical” distinctiveness:19

… ‘Technical distinctiveness’ refers to the capacity of a mark to function as a badge of origin. This capacity can be inherent (‘inherent distinctiveness’) where, for example, the mark is meaningless in the context of the goods or services of the application. This capacity can also be acquired (‘acquired distinctiveness’) as a result of long and extensive usage of the mark by its proprietor …

17 Another formulation was proposed in Caesarstone Sdot-Yam Ltd v Ceramiche Caesar SpA20 (“Caesarstone”). In that case, the High Court regarded the term “technical distinctiveness” as synonymous with, or equivalent to, inherent distinctiveness:21

A newly invented word which has no meaning will carry a high degree of technical (or what is sometimes called inherent) distinctiveness when it is used as a trade mark. [emphasis added]

18 The relationship between the terms then came full circle back to Lord Walker's original version in Monster Energy Co v Glamco Co, Ltd.22 In that decision of the High Court, technical distinctiveness again

specifically had to do with whether the words comprising the mark are descriptive. Chan Seng Onn J said:23

Technical...