Making your mark

March 6, 2015 Published by

Trade marks can offer powerful protection for brands. But in order to be capable of trade mark registration, trade marks need to be sufficiently distinctive. This was the key question in two major trade mark judgments in 2014 and these decisions highlight the challenges in determining if a proposed trade mark is more than purely, directly or inherently descriptive.

The Trade Marks Act 2005 (Cth) (“the Act”) outlines requirements that individuals and companies need to consider when applying to register a trade mark in Australia. Section 41 of the Act states that if a trade mark will be rejected if it is not capable of distinguishing the applicant’s goods or services from the goods of others. Section 44 of the Act provides that an application for a trade mark will be rejected if it is “substantially identical” or “deceptively similar” to goods or services offered by another.

Cantarella Bros v Modena

Cantarella Bros, a coffee trader, had successfully registered two Italian phrases – “oro” (gold) and “cinque stele”(five stars). The basis for their dispute was that Modena, also a coffee trader, breached their two registered trade marks.

The High Court confirmed a two-stage test to determine whether a trade mark is “inherently adapted to distinguish” the goods and services of others, in accordance with section 41 of the Act. The two-stage test is:

  1. What is the “ordinary signification” of the words to any person in Australia, concerned with the goods or services in question?
  2. Will other traders who deliver similar goods or services legitimately need to use the word(s)?

The High Court held that both trade marks comply with s 41 of the Act and were “inherently adapted to distinguish” Cantarella’s goods and services from another. Cantarella had successfully registered foreign language words as trade marks, to be exclusively related to their own coffee goods and services. The importance of this case is that it seems courts are now more likely to consider that foreign language words may be registered as trade marks for specific individuals or companies.

Apple Inc v Registrar

In this case, the Federal Court refused Apple’s request to trade mark “App Store” in Australia. The judge held that the term “App Store” was descriptive, because consumers who have a general understanding of digital terms would understand it as it appears, i.e. a “store” that provides “apps” for a consumer. The judge said that the term was not capable of distinguishing the designated services as exclusively Apple’s.

Brand considerations:

When choosing a brand name and potential trade marks, advertisers and their agencies should bear in mind:

  1. It is a good idea to conduct searches of pre-existing trade marks, as well as other traders potentially using your proposed trade mark.
  2. It is likely that foreign words have a good chance of being able to be trademarked in Australia based on the decision in Cantarella Bros v Modena.
  3. Trade marks that are purely descriptive continue to be difficult to register under Australian law.
  4. When considering registering a trade mark, distinctiveness is a key consideration. It is necessary to make your mark stand out.

For assistance with brand protection, contact us.

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