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Trade Marks

Distinctiveness – why trade marks are refused

Max Steinhausen

The process of registering a trade mark is a relatively simple process in itself and doesn’t formally require a lawyer. However, the rules governing trade marks behind the scenes are more complex – and there are many less obvious reasons why an application may not be successful.

Perhaps one of the most common reasons is a so-called “lack of distinctiveness”, which can result in your trade mark being rejected.

Australia, in particular, is known to be fairly strict in this aspect of trade mark applications. Usually, IP Australia will reject an application with a label such as “trade mark not distinguishing the goods or services”.

Despite distinctiveness being perhaps the most critical part of trade mark filing, it is often poorly explained to the public.

Why is distinctiveness important?

So, why the big fuss about distinctiveness?

While it is generally a good idea to register a trade mark that stands out from the crowd, choosing a brand name that links to its products, services and source material can also seem advantageous.

Unfortunately, this causes problems on the legal front. Sounding similar to competitors runs the risk of causing confusion among the general public – they might mistake your brand as being related in some way to the existing competitor. The other problem is that when your brand describes its product or service too well, it is considered ‘merely descriptive’ or ‘laudatory’. These trade marks are generally rejected to prevent businesses from monopolising on words that are commonly used by other businesses or the general public.

But what about Apple?

There are, of course, exceptions. For example, you might wonder why words like “Apple” can be trade marked. The simple answer is, that the word “Apple” is of course purely descriptive for fruits. However, it does not describe in any way any good or service (e. g. software and IT services) that the well-known company is offering to the relevant public. Because Apple is not a fruit and veggies retailer but is selling software, this name is a perfect example for a really distinctive word trade mark, even though it is completely descriptive and therefore not registrable for anything in relation to fruits. If you believe your proposed business/ company name could be descriptive, our IP Consultants can review and advise you further.

What is not distinctive?

While it is judged on a case-by-case basis, there are some common mistakes that lead to trademark rejections. If your planned trade mark has any of the following aspects, it’d be worthwhile to get advice from an IP specialist before applying.

  • Descriptive marks – words that simply describe the good or service, i.e. words that indicate the type, quality, quantity, intended purpose, value, or geographic location of the goods. For example, trademarking “Dozen Victorian Eggs” for a product of eggs from Victoria would likely fail since the name only describes the amount and origin of the goods (Dozen, Victorian) and what the product is (eggs), and nothing further.
  • Promotional slogans – generic promotional or motivational statements are likely to be rejected. It is possible to register trade marks that partially consist of a slogan, but these may still require further justification.
  • Surnames – names that appear on the Electoral Roll more than 750 times are generally considered too “common” for a trademark.

What is distinctive?

Identifying a distinctive trademark can be difficult, but the following guidelines should give you some idea.

  • Invented words – words that don’t exist in the dictionary and do not have a common meaning to the target customers are generally considered distinctive by default
  • Unique combinations – combining the common with the uncommon is an easy way to make something unique. That is why there are so many “iBrand” style names – it is a quick and easy way to make something unique.
  • Foreign words – foreign words are generally passable, even if the meaning of the words describes the product. As long as the general public aren’t expected to understand what the word means, it can still be considered distinctive. Foreign words are not automatically passable, though, and you should still seek expert advice if you are unsure.

If you are wondering whether your trademark idea is worth registering, or need advice on making sure it’s distinctive, then get in touch with us for a free consultation.

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