A Distinctive Absence: Registrable Trade Marks in 1875

Abstract

Distinctiveness is a foundational concept in contemporary trade mark law. This chapter reconstructs the origins of this concept, in the UK’s first trade mark registration system established in 1875. In so doing, it makes three contributions.
First, it retrieves a model of distinctiveness which was differential or relational. The extent to which a sign being claimed was different from others on the market improved its chances of registrability for a given product. By contrast, whether a sign worked factually to indicate origin was irrelevant. In other words, for new marks, source indicating ability was approached via differential distinctiveness. Second, this account explains the architectural choices and key features of this first register. Registration was layered over a judicially developed model based on prior and exclusive user of a sign on a vendible product. Use was at the heart of this model, not only for recognising rights to the sign but also for defining their scope. However, proving use was inconvenient and expensive. The proposed remedy was a formal means of readily evidencing title. Registration became a substitute for actual use, allowing marks to be claimed in the abstract and across the entirety of the British market. This chapter explores the implications of this radical move as well as the accompanying bureaucratic apparatus to achieve it, reconstructing the origins of the first goods classification system adopted by the registry. Third, it explains why the very restrictive “essential particulars” model was adopted in the 1875 Act, forcing registrable marks into tightly defined formats. With rights now being granted without use-based contextual limits, other checks and balances were required. Before 1875, courts had recognised a wide range of indicia as being protectable in specific contexts. By contrast, section 10 was designed as a bottleneck, such that the registry would accept only certain unobjectionable categories of new marks. Notably, words per se were excluded. However, this rapidly generated strains within the system, since words proved to be attractive marks and effective origin indicators in practice.
With the benefit of hindsight, an account of the origins of the first British trade mark registration system serves as a reminder that from its inception, the decision to register a mark has called for a blend of empirical and normative decision-making. Trade mark registries have always been in the business of allocating property rights to applicants. We have moved from the high barriers of the first regime to the low thresholds of contemporary registration. Perhaps the conclusion to draw from these two extremes is that refining the scope of marks after they are registered may be the best way forward.

Keywords: Trade mark, trademark, history, distinctiveness