Intellectual Property in Commercial Settings

Requirement: A mark must be distinctive

The main function of a trade mark is to distinguish between different businesses offering the same or similar goods or services in the market. Therefore, it is important that a mark or logo is capable of being distinguished from existing marks. A mark that is similar to an existing trade mark or which lacks distinctiveness may not be registrable. Broadly speaking, IP Australia will consider whether the proposed mark is able to be distinguished and to what extent.

Inherently able to distinguish

A trade mark that is unique and which is not likely to be used by others in the same trade is considered inherently able to distinguish the relevant goods or services from other goods or services in the same market. Made-up words will usually be inherently distinctive, as well as words used in unusual contexts. A trade mark that is inherently distinctive is likely to meet the legal requirements for registration in the first instance.

Kodak SLR film camera — The word Kodak was synonymous with cameras for over 100 years.

ExampleCreative use of words

Kodak is a made-up word that distinguishes Kodak cameras from other cameras in the market. The word is not descriptive so it is unlikely to be used by other camera manufacturers. Similarly, Apple is a common word but nothing about the word normally relates to or describes anything technological. So it's unusual to use it for computer products, making it inherently distinctive when used on these products.

Think of another well-known trademark. Is it a made-up word or a common word used in an unusual context?

Able to distinguish to some extent

Even where a trade mark is not inherently distinctive, it may still be registered if it has some ability to distinguish and the prospective trade mark owner can show that it does, in fact, distinguish.

Marks with a limited ability to distinguish include marks that have some descriptive features or which consist of words or features that may be used by others in the ordinary course of their business. Colour, sound and scent marks are also likely to fall into this category.

ExampleDescriptive features

In one case from 1999, the mark FINEFORM was able to be registered for lingerie, even though the word had some descriptive connotations. This was because the word was not one normally used by other lingerie retailers, and because the trade mark applicant could show evidence that the word had acquired an association with their brand in the minds of consumers.

In 2002, a terracotta shade was able to be registered as a colour trade mark for plastic pipes and pipe fittings, because it was unusual for those pipes to be that colour. The colour had no functional purpose, but instead worked as a ‘badge of origin’ in the minds of consumers that pipes in that colour came from the applicant company.

A trade mark applicant can overcome a claim that their mark does not distinguish by presenting evidence that the trade mark already distinguishes the applicant’s goods or services in the market or that it has the potential to do so in the future. The applicant will need to show that consumers view the mark as a badge of origin for the goods or services, and not simply as descriptive of some of the features or qualities of the goods or services.

If a mark has already been in use prior to the application for registration, evidence of use may include sale reports, advertising expenditure and evidence of the geographical extent of the use of the mark until the date of application. If a mark is yet to be used, the applicant may have to show pre-launch market research, advertising and sales plans. The extent of evidence required depends on the nature of the mark in question.