How to “test” your trade mark’s distinctiveness

Row of different colour cacti

Distinctiveness is important because it impacts everything from the registrability of your trade mark, to its scope of protection, to enforceability and its continuing validity once registered.

Unfortunately it is something that can be overlooked by brand owners.

It is a fundamental principle of trade mark law that only trade marks that are either inherently distinctive, or have a demonstrated capacity to distinguish (i.e., that have acquired distinctiveness), may be validly registered.

Inherent Distinctiveness

A trade mark is said to be inherently distinctive if other traders (having only proper motive) will not desire to use it in connection with their own goods or services which are the same or similar to those specified in a trade mark application. For example, the mark “Permanent Colour” for house paint is not inherently distinctive because it consists of words which multiple paint manufacturers might legitimately want to use to describe their own product. In contrast, the trade mark DULUX® for house paint is inherently distinctive because it does not describe house paint at all.

Acquired Distinctiveness

A trade mark may be deemed to have acquired distinctiveness and therefore become capable of distinguishing the relevant goods or services if it has been used (or in some cases, is intended to be used) by the trade mark applicant to such an extent that consumers associate the trade mark with the applicant and not with some other business. For example, the word SPORTSBET® is not inherently distinctive in respect sports being agencies, however that trade mark has been allowed to register on the basis that it has acquired distinctiveness through substantial use.

Distinctiveness and Registrability

The degree to which a trade mark is inherently distinctive for the goods and services in question is important; if a trade mark is not clearly inherently distinctive then acquired distinctiveness must be demonstrated, which can be a drawn-out process that may end unsuccessfully.

If the trade mark is neither inherently distinctive and has no demonstrated capacity to distinguish the goods or services of the application, the application will likely be refused acceptance.

The bar for demonstrating capacity to distinguish is set high (particularly in Australia) and it will usually require submitting evidence of at least three years, and often longer, of commercial use of a trade mark before the Trade Marks Office (IP Australia) will accept a trade mark as having acquired distinctiveness. This is one reason why it is preferable to choose a trade mark that is clearly inherently distinctive at the outset.

Testing (and preserving) distinctiveness

There are some good practices to follow as well as certain things that should be avoided.

Do:

☑ use invented words

e.g.  XEROX® for photocopiers has nothing to do with photocopying and is highly distinctive

Do not:

☒  use descriptions of your goods or services;

☒  use names that refer to a geographical location where the business is, or could be, carried out;  

e.g. DUBBO MOWING SERVICE is not a distinctive trade mark because any number of mowing services might wish to do business in Dubbo and legitimately use this trade mark.

☒  use a surname as a trade mark.  The name of a person, especially if it is a name that is considered common, is not usually registrable unless it is represented in some unusual manner.

In respect of preservation, just as distinctiveness can be acquired, it can also be lost. This can happen if a mark’s use becomes generic or becomes a common term. It can also occur if the ability of the mark to distinguish goods or services as being from a particular enterprise is eroded.

If you have received a lack of distinctiveness trade mark objection from IP Australia

Your trade mark will only be accepted if you can supply evidence that demonstrates the objection should be withdrawn. Seeking advice from a registered Trade Marks Attorney about your proposed trade mark is likely to be the best way to approach the objection. Your Trade Marks Attorney can also assist you with gathering and submitting evidence.

Standards and processes vary from country to country so it is best to check what is required in each jurisdiction to ensure a strong and effective trade mark.

If you have any questions or need guidance when it comes to registering your trade mark or overcoming an objection, please contact [email protected] or [email protected].



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