Many new businesses in Australia pick a descriptive brand name when starting out. The problem with this is that trade marking a descriptive name can be incredibly difficult, leaving your brand with no protection after you’ve already spent time and money on signage, packaging and a website. In this article, we cover the distinctiveness requirement in trade mark registration and what you can do to successfully trade mark your brand name.
Why do descriptive trade marks get rejected in Australia?
The purpose of a trade mark is to distinguish your goods or services from those of other traders. A name that merely describes what you do, what your product is or where you are located generally cannot perform that function, because it describes your competitors just as accurately.
This is why section 41 of the Trade Marks Act 1995 (Cth) allows your trade mark application to be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services from those of other people.
The policy behind the rule is fair competition. If generic or descriptive trade marks were allowed, then one trade mark holder could prevent other honest competitors from using common words for their industry. Imagine if you sold stationery and you couldn’t use the word ‘pen’!
Which trade marks are descriptive in Australia?
There can be degrees of descriptiveness in a trade mark, and it’s important to know where the boundary between distinctive and descriptive lies. Here’s a list of rough categories, ranked from strongest to weakest.
Invented words
This is generally the strongest kind of trade mark, as no other trader has an obvious need for it. However, be careful if your invented word combines existing words, as the natural meaning might still be descriptive or generic. Let’s take the ‘pen’ example from before. ‘Smoothpen’ is an invented word, but it still has a natural meaning of ‘pen that writes smoothly’ or ‘pen that is smooth to the touch’.
Ordinary words used out of context
A real word applied to something unrelated to its meaning also tends to do well. For example, ‘Pen’ wouldn’t be distinctive for stationery, but likely is distinctive for cooking equipment.
Suggestive words
Words that hint at a quality without describing it can be distinctive, but not by much. For example, ‘scrawl’ or ‘scribble’ for pen brands or product lines.
Descriptive words
Words that directly describe the goods or services, their quality or their purpose are ordinarily refused. If our stationery brand’s trade mark was simply ‘pens’ or ‘stationery’, the application would be refused.
More examples of descriptive marks incldue:
- A place name plus the service
- ‘Melbourne Stationery’ tells customers what you sell and where you’re located. But as there are other stationery stores in Melbourne who will want to specify what they do and where they’re based, you’re going to find it difficult to distinguish yourself from them.
- The name of the thing you sell:
- ‘Stationery Store’ describes every stationery business in the country.
- Laudatory words:
- ‘Best’, ‘premium’, ‘quality’ and ‘expert’ are treated as words that every trader is entitled to use.
- Initials and very short acronyms
- ‘AM’, ‘CM’, ‘KG’ or other initials or short acronyms may be used by other traders to refer to time, quantities, or measurements, and won’t distinguish your trade mark. The longer and more unique your acronym is, the more likely it will be accepted.
- However, this doesn’t apply to acronyms that spell something with a descriptive meaning. For example, ‘Intricate Note-taking Kits’ (‘INK’) for stationery sets likely wouldn’t be registered.
- The name chosen because the domain was free
- Domain availability is not an indicator of registrability.
My business name is registered. Doesn’t that count?
Unfortunately, registerign a business name doesn’t protect your brand like a trade mark does. A business name registration identifies who is behind a business; it does not give you ownership of the name. ASIC accepting your business name doesn’t tell you whether IP Australia will accept your trade mark. Read more about the difference in our article on trade marks versus business names.
Can you overcome a distinctiveness objection?
It depends on the circumstances. If an application is refused, IP Australia issues an adverse examination report, and there is a 15 month window to respond. For a distinctiveness objection, the main avenues are:
- Narrowing the goods and services that the trade mark applies to;
- Providing evidence of use showing the name already identifies your business in the market (you can find examples of evidence on the IP Australia website here); or
- Appeal the decision (though this costs additional fees).
However, most startups refused on distinctiveness are not able to overcome the refusal. Narrowing the applicable goods and services rarely helps, because the business is usually named after its core product or service. Evidence of use requires a history of trading under the name, which a new business does not have yet.
If the application can’t be saved, the most common fix is to change the trade mark to something registrable, which often means starting the application again, and having to change your brand to fit the new trade mark.
Therefore, protecting your brand before you invest in it will cost far less than discovering the problem afterwards. This is why consulting a trade mark lawyer before you start your business is essential. We review your proposed mark and advise on how to maximise its prospects of registration.
I really want this name. Can I still use it without a trade mark?
Whilst you can legally use a descriptive name for your brand, it’s not the best for your business. Because the name is descriptive, customers might confuse it with other businesses or forget that it exists, because there’s nothing that distinguishes it. Additionally, if another business also chooses to use that descriptive name or something similar, you won’t be able to enforce your trade mark rights against them, because you won’t have any rights over the name!
Why register at all, and why not wait?
A registered trade mark gives its owner the exclusive right to use the mark for the registered goods and services in Australia, the right to license or sell it, and the right to use the ® symbol. It also puts your ownership on a public register, so you have something concrete to point to if a dispute arises.
Aside from distinctiveness issues, applications may be rejected because it resembles an existing trade mark. So if someone else files a similar trade mark while you’re still deciding on your brand name, you might be blocked from registration and the protection that registration gives you!
What next?
The best time to talk to our trade mark lawyers is before you fall in love with a name. Book a free consultation for a fixed fee quote upfront, so you know the likelihood and cost of registration before any work starts.
