MichaelBuck IP

A Patent & Trade Mark Attorney Firm

Using Evidence to Overcome Lack of Distinctiveness Trade Mark Office Objections

By Michael Buck

A common type of objection to trade mark registration that may be raised by a trade marks examiner at IP Australia is that the mark is not “distinctive” as required under Section 41 of the Australian Trade Marks Act. This means that the mark isn’t sufficiently adapted to distinguish the applicant’s goods / services from those of other traders. 

This type of objection will be raised if the mark is directly descriptive of the goods / services that are listed in the trade mark application or some quality that they have. For example, EXTRA FLAVOUR for bananas (or pretty much any food) would be objected to as not being sufficiently distinctive.

Other types of marks that are likely to attract this type of objection are:

  • Place names, e.g. DUBBO for laundry (or just about anything else that might be offered in trade in the town of Dubbo)
  • Laudatory names, e.g. PERFECTION for crystal ware
  • Surnames that appear on the electoral role more than 750 times, e.g. RICHARDSON for bicycle repair services
  • Commonly used descriptors for retailers, e.g. “...R-US”, “......WORLD”, “KING OF.....”
  • Terms that are descriptive of the goods / services in general, e.g. TRU-IMAGE for cameras, HAPPY CAMPERS for camping ground hire services.

Marks which are somewhat inherently distinctive, but not sufficiently inherently distinctive for registration will be objected to by the Trade Marks Examiner under Section 41(5) of the Trade Marks Act. Marks which are completely lacking in inherent distinctiveness will be objected to under Section 41(6) of the Australian Trade Marks Act.

If your trade mark application has been objected to under Section 41(5) of the Trade Marks Act, because it is only somewhat inherently distinctive, then it may be possible to overcome the objection by lodging evidence demonstrating that the mark is factually distinctive.

The sort of evidence that needs to be lodged must show that the trade mark has been used by the trade mark applicant in trade for a significant period of time and in significant volumes. Information such as expenditure on advertising to promote the trade mark, the volume of goods that have been sold bearing or packaged with the mark, website hits and even exposure of signage to passing traffic will all help to demonstrate that there is a reputation in the trade mark.

If the mark has been objected to under Section 41(6) of the Trade Marks Act then the evidence of use must show that the relevant consuming public would naturally associate the mark with the trade mark applicant. Usually such evidence would need to demonstrate high volumes of sales and a high degree of promotion of the mark over a prolonged period of many years.

Consequently, it is very important that businesses keep records of their promotional expenditures and activities over the years. These records should include what the money was spent on, e.g. magazine advertising, Yellow Pages, Google Adwords, signage, sponsorships etc, what the likely circulation or exposure figures were and the period of time in which the promotional activity occurred.