Is your trade mark sufficiently distinctive?

Nov 10, 2021

Is your trade mark descriptive or distinctive?

In order to register your (or your business’s) trade mark with IP Australia (the agency responsible for administering intellectual property rights in Australia) and, in turn, to strengthen your brand protection, you must ensure that your trade mark is sufficiently distinctive. This means that your trade mark must actually distinguish the goods and services that you provide, from the goods and services provided by others.

Descriptive marks

Importantly, your trade mark may not be sufficiently distinctive for registration if it is descriptive of the goods or services that you are seeking to protect, or contains commonly used descriptive terms, phrases or images. IP Australia have provided some examples of signs which would be difficult to trade mark because they are too descriptive, including “STRAWBERRY” in relation to drinks, “WARM” in relation to heaters, or “GLOBAL” in relation to freight shipping services.

IP Australia often rejects applications to register descriptive marks on the basis that other traders should also be able to use these terms to describe their own goods or services. So, the trade marks which are arguably the easiest to register are words or images that are entirely invented or unrelated to the goods and services for which the trade mark application claims protection (for example, “APPLE” for computers).

There are, however, some circumstances under which a descriptive term can take on a secondary meaning and become distinctive, for the purposes of registration.

Secondary meaning

A trade mark may acquire distinctiveness and become registrable (even where the mark is descriptive) if the relevant business has developed such a strong reputation amongst consumers whilst using the mark, that the mark has become synonymous with a certain product or service.

When assessing whether a secondary meaning has been developed, IP Australia will consider whether the trade mark has come to describe only the applicant’s goods or services in the minds of relevant consumers.

In order to prove that your mark has taken on a secondary meaning, you must be able to produce evidence, not just of adequate use in commerce and in relation to the particular product or service you wish to protect, but you may also be required to produce evidence of the perception of your brand within the marketplace.

What to consider when developing your brand

Over time, your trade marks may become some of the most valuable assets of your business. When developing your brand, you should consider whether the brand is sufficiently distinctive to the extent that it can be adequately protected by registration.

If you need help choosing an appropriate brand, registering a trade mark, or otherwise protecting your intellectual property, the KKI Commercial team is here to help.