Trade marks and the distinguishing test

Registering a trade mark is a common way to identify a unique and distinctive product or service that is used in a business. The purpose of registration is also to allow use of the trade mark for goods or services to the exclusion of others.

IP Australia will consider an application for registering a trade mark against the requirements found in the Trade Marks Act 1995 (Cth) (the Act). One of the requirements of section 41 of the Act is for the trade mark to be capable “of distinguishing the applicant’s goods or services from the goods or services of other persons”.

A trade mark can be registered over words, numbers, sounds, shapes, pictures or even a scent. Provided, the trade mark performs the central function of distinguishing the trader’s goods from those of other traders it may satisfy section 41 of the Act making it suitable for registration.

The recent High Court decision of Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 considered whether the Italian words “Oro” and “Cinque Stelle” are inherently adapted to distinguish goods from the goods of other persons. In Italian “Oro” means gold and “Cinque Stelle” means five star.

The Court considered the “ordinary signification” of the words to people in Australia and found that they convey no meaning to the ordinary person about the quality of the goods. It followed that the trade mark was found to be inherently adapted to distinguish the goods from the goods of other persons. Modena failed to prove that “honest traders might legitimately wish to use the words to directly describe, or indicate, the character or quality of their goods”.

Common examples of signs which are not distinguishable include signs ordinarily used to indicate quality, quantity, intended purpose, value and geographical origin.

It may still be possible to register a trade mark if the applicant of a trade mark registration can show that prior to applying to register the trade mark, the trade mark was used to such an extent that the trade mark does in fact distinguish the goods or services as being those of the applicant.

In another recent case of Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 it was found that Apple could not register the words “app store” as this was too descriptive and did not distinguish Apple’s goods or services from those of others.

These cases remind of the importance to ensure a trade mark meets the distinguishing test to be suitable for registration.

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