Can descriptive trademarks be registered in Australia?

20 October, 2022

Thank you for the valuable review from my client this morming. His trademark is one of my most memorable clients in 2022 because it takes a lot of time and efforts to get everything done.

His trademark was rejected based on Section 41 Trade Marks Act 1995 in Australia, as it is the name of a product that he is selling.

The question is whether descriptive trademarks be registered in Australia?

Our articles will provide the answer and some key take aways you can use when submiiting the evidence of use in Australia based on Section 41.

Can descriptive trademarks be registered in Australia?

If your trademarks are just the name of a product. It means that you cannot use that mark to differentiate your products from those of your competitors. Therefore, gererally it cannot be registered by the Trade Marks Act in Australia.

Examples of marks which are unlikely to act as a badge of origin include those which are:

• descriptive of your goods or services
• containing common surnames or geographic names
• common to the trade (such as serial numbers, letter and number combinations, commonly used slogans).

But no too worries!

That trademark still can be regietered if you can provide the evidence of use to prove that the trademark has been used in practice and has created an associated impression in the mind of the customer in Australia.

Legal grounds ?

Section 41 of the Trade Marks Act 1995 deals with whether or not a trade mark is capable of distinguishing your goods and/or services from the goods and/or services of other people.

More details:

• Subsection 41(3) applies to trade marks that have no inherent adaption to distinguish. These are trademarks that other traders need to use.
• Subsection 41(4) applies to trade marks that have limited adaption to distinguish. These are trademarks that other traders are likely to want to use – but don’t necessarily need to.

The type and amount of evidence you will need to provide will be different depending on which issue is raised. Generally, a ground for rejection under subsection 41(3) will require more substantial, persuasive, and high value evidence. Of course, as the subsection 41 (3) there is not inherent adaption to distinguish.

One important note:

• Subsection 41(3) – it all has to be actual use of the mark, before you even applied.
• For subsection 41(4), you can provide evidence of use from before, or after, the day that you applied for your trademark.

Our client’s case

My client falls into the category of a trademark that has not inherent adaption to distinguish. We have therefore attempted to collect all evidence from the date the trademark was used prior to the date the trademark filed from financial and marketing perspectives. The questions that we need to answer are:[1]

• when the trade mark was first used and the period of use
• whether or not use has been continuous
• the geographical extent of the use
• advertising expenditure and annual turnover figures
• how your trade mark is used in connection with the goods and services so that it is viewed as a trade mark and not a description of the goods.

The following information is also useful (this is not an exhaustive list):

• indication of market share
• individual item cost (this should be considered in the context of turnover figures. Inexpensive goods or services are likely to have a wider market and more competitors than expensive, specialised items).
• indication of advertising types e.g. television, radio, print, Internet
• publications/articles mentioning the trade mark
• indication of customer base (who are the applicant’s major customers in Australia or overseas?)
• indication of distributors (if the applicant sells their goods via a third party, how much presence does the third party have in the market place?)
• references to Internet website/s where trade mark is used
• declarations from persons of standing within the relevant trade
• consumer surveys and/or questionnaires.

Through careful and convincing analysis by experienced and qualified trademark attorneys, the client’s descriptive trademark has been officially protected in Australia.

Would like to know more our happy clients? Here is the list for your reference.

[1] https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/trade-marks-examination-process/evidence-of-use/more-information-about-section-41-evidence