A trade mark is important to help protect and distinguish your company’s brand, name or services. It must be something unique, individual and is able to be set apart from other goods and services in the market – that is, distinctive as required by the Trade Marks Act 1995.
A trade mark should not just merely describe your company’s goods or services or indicate characteristics of goods or services. For example, common terms, descriptive words or images, ordinary colours and shapes of goods, and geographic origins of the goods or services.
Therefore, a distinctive trade mark would be one that does not directly describe what you offer or do. It has to be something that other traders may not legitimately want to use.
Test for Distinctiveness in Australia
In order to register your trade mark, it is important to ensure that it meets the distinctiveness test. Determining whether a trade mark is capable of distinguishing your goods and/or services involves:
- Establishing the ordinary signification of the mark to ordinary persons, traders and purchasers concerned with the goods or services.
- Determining the likelihood that other traders might legitimately use the mark in its ordinary meaning for their own similar goods or services.
Trade marks can fall into three categories:
- Trade mark is inherently adapted to distinguish and therefore capable of distinguishing.
- Trade mark has some limited inherent adaptation to distinguish but not capable of distinguishing.
- Trade mark has no inherent adaptation to distinguish.
Trade marks with limited or no adaptation to distinguish can face objection from IP Australia for registration. However, there is an exception – acquired distinctiveness.
Exception: Acquired Distinctiveness
Trade marks with no inherent adaptation to distinguish may still become distinctive through the use made of it on the designated goods or services. Trade marks with limited inherent adaptation to distinguish may become distinctive through proving that the mark does or will distinguish the goods or services from other traders, taking into account a combination of factors.
IP Australia’s Trade Mark Manual states that there is no length of time which determines when a mark has acquired capacity to distinguish. Normally, the longer a trade mark has been in use, the likelier it is to acquire distinctiveness. However it will depend on the degree of inherent adaptation of the trade mark.
The Manual also states that the extent of trade activity may be an indicator of acquired distinctiveness. A shorter length of use may still acquire distinctiveness if it is shown with a significant market share, demonstrating strong brand recognition.
When a trade mark has acquired a level of distinctiveness, it may be found capable of distinguishing.
Our services
The best way to make sure that your trade mark is distinctive is to ensure that it does not directly describe your goods or services. At OpenLegal, our team can assist with ensuring that your trade mark meets the distinctiveness requirement, so that you can smoothly register your trade mark.
To further discuss, please contact us at enquiries@openlegal.com.au or 1300 337 997.
Anneka Tan, Intern at OpenLegal
