When a considering applying to register a trademark there are a number of issues to weigh up first.
Section 41 (1) states:- “an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services ) from the goods or services of other persons.”
The keyword in that section is “distinguishing”.
Section 41 (2) and (3) go on further to say a trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons if:
“(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons…”
The key phrase in those sections is “inherently adapted to distinguish”
The notes to the Act state: “Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services”
This essentially means that there is a tension between inherently distinctive signs and descriptive signs.
Inherently distinctive signs | Descriptive signs |
Signs that are inherently distinctive are seen as making a particular good or service:
· separate (from others); · different (from others),
and thereby distinguishing and more likely to be accepted by IP Australia.
Characteristics of these types of marks are:
· they are non-descriptive; · fanciful or imaginative.
| Descriptive signs are those that:
· describes a quality or characteristic of a good or service; · are generic
An example of something that is generic would be “ORANGE” as it relates to fruit.
If you tried to trademark “ORANGE” in the context of a fruit shop (eg. ”The Orange Fruit Shop”), it would not be registrable because other sellers of fruit would likely sell oranges.
If on the other hand you tried to trademark “ORANGE” but in the context of a Telecommunications business – it would not be generic and much more likely to be registrable.
A merely descriptive mark describes a characteristic of the goods or services. Marks that are merely descriptive generally are not protected or accorded trademark rights. This is because they are not sufficiently distinguishable.
For example, “Suntan Oil” is merely descriptive. Whereas, “Coppertone” is non-descriptive. So, Coppertone would be registrable whereas Suntan Oil would not. |
Therefore, signs that are inherently distinctive are distinguishing and more likely to be accepted by IP Australia. Whereas generic/descriptive marks are unlikely to be accepted.
There is a further element which relates to geography. Trademark applications that contain a geographic location do raise red flags with IP Australia. Generally, you are not allowed to monopolise the name of a place or region for your business, unless you have significantly used the name over time. For example, Hastings Street in Noosa is a popular restaurant and cafe district. It would be difficult to trademark the name ‘Hastings Street Cafe’, since other restaurants rely on using ‘Hastings Street’ to describe their services.
Before applying to register a trademark it is important to obtain legal advice. Contact Greyson Legal, trademark lawyers.