The issue is pertinent as the titles (trade marks) of newspapers, magazines and so on, often describe the contents of their publication, or its geographical location, and it is worthwhile looking at this issue to understand the problem a media company may face when it has a valuable mark, but one which is seemingly descriptive of the nature of its goods or services.
A decision involving the MEN'S HEALTH trade mark given a few years ago is of interest still today, as far as the position of trade marks in the printed media is concerned. It might be compulsory reading for anyone involved in the marketing of products. The well-known trade mark "MEN'S HEALTH" was registered in relation to publications in class 16 of the Register of Trade Marks, and was endorsed to the effect that it will only be used in relation to health issues. There was a disclaimer for the word "MEN" (in other words, no-one could have exclusive rights in relation thereto). The respondent was a company specialising in the treatment of health problems experienced by men. They used a website menshealth.co.za, from which they conducted the business of providing advice on sexual health problems of men.
Men’s Health instituted trade mark infringement proceedings against them and in response an expungement application was brought against Men’s Health’s trade mark registration.
It was held by the court that the term "MEN'S HEALTH" is descriptive of the applicant's goods, even though the applicant argued that it is not wholly descriptive. It was said that the use of a trade mark that is descriptive is likely to cause confusion and this is directly attributable to MEN'S HEALTH using such a descriptive name as its mark. Accordingly, MEN'S HEALTH is descriptive rather than distinctive.
Dealing with the facts, the court came to the conclusion that it may be a classic case where use does not equal distinctiveness, and, despite extensive use (then 32 000 copies per month), the mark was considered to be descriptive. It was then removed from the Register of Trade Marks.
On the merits and to test the court’s view against other examples in the publishing industry: what about a newspaper from Pretoria, called PRETORIA NEWS? What about a weekly publication dedicated to farming called FARMER'S WEEKLY? Or a newspaper published on Sundays, under the name SUNDAY TIMES? And then you have THE NEW YORK TIMES, and READERS' DIGEST, GUNS & AMMO, SPORTS ILLUSTRATED and so on. Different rules must apply to accommodate the unique nature of printed media titles.
It is also not clear how a non-distinctive mark's use can cause confusion and can be attributable to the choice of MEN'S HEALTH as a trade mark. Confusion normally requires a reputation and if nothing is retained in the memory of the public, it being a descriptive mark in the court’s view, how can there be confusion?
The decision is not entirely clear as to the various issues that were raised therein. However, it does indicate that it is difficult to maintain a trade mark that can be seen to be descriptive. Whether the trade mark MEN'S HEALTH is really descriptive, however, is open to debate. One view is that the distinctiveness requirement should be interpreted "generously" when dealing with newspapers etc. That said, it may be that the court could find that there is bona fide descriptive use, even if the MEN’S HEALTH mark is well-known.
What is clear is that if another magazine calling itself Men’s Health would appear on the market, the owner of the mark would most likely be able to succeed on the basis of the common law remedy of passing off. The facts in the above case are not ideal to test the boundaries of a registration for MEN’S HEALTH.
What is interesting is that since the above judgment was given, a brand new registration for MEN’S HEALTH that proceeded to registration without any opposition, has found its way onto the Register of Trade Marks. This means now, that despite the above court case, MEN’S HEALTH is again a registered mark and this registration, along with its common law rights, would imply strong rights to protect the mark, even if seen to be descriptive.
Lastly, the moral of the story is that it is still always best to register your mark, even if it is perceived as being descriptive. Special rules somehow do seem to apply to printed media as it is often descriptive in some or other sense. For instance, a well-known magazine such as FORTUNE, even dealing with fortunes, can still be protected. Non-descriptive titles, such as RAPPORT, HARPER’S BAZAAR, and VANITY FAIR, would, of course, have fewer problems in defending their mark.