Having undistinctive and generic words as part of your business name or marketing material can be quite difficult to trademark. There are a few things to consider if this is something you are thinking about doing.

What can be considered generic words?

Generic words and terms generally cannot be trademarked in Australia if they are common words that identify objects not specific to any particular source or are capable of distinguishing the product or services from other products or services. If they are merely descriptive and used to describe the type, quality or value of the products it can be difficult to have this kind of trademark registered or even enforced. If words that describe a service or product were trademarked, it may give the trademark holder an unfair advantage over its competitors. However, trademarks themselves can even become common terms over time such as, ‘I need a Band-Aid!’ or ‘Just Google it!’ This may be beneficial to the business to increase marketing and popularity; however, it does mean that it can be more commonly used and will be difficult to enforce trademark protections.

One such example is the ugg boot. The word ‘ugg’ in Australia is used to refer to a type of footwear, which is usually a tan boot on the outside with sheepskin on the inside and a synthetic sole. The American company ‘UGG’ is a manufacturer of ugg boots in the US and has a registered trademark for its name there and in other countries including the European Union and China. There have been many trademark disputes between UGG and manufacturers of the ugg boot both in Australia and throughout the world.

The ‘Vittoria Coffee’ case

In 2014, Vittoria Coffee brought an action against rival companies for using the Italian words for ‘gold’ and ‘five star’ in their advertising materials. The majority of the High Court ordered that the Italian words, ‘Oro’ and ‘Cinque Stelle’ can be trademarked by Vittoria Coffee, as they ‘were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee grounds as to be words having a direct reference to the character or quality of the goods.’ The words themselves did not have an ordinary, generic meaning to people living in Australia that would be relevant to the products.

The minority decision of the High Court was concerned about the extensive Italian population in Australia who would understand the words to refer to quality or characteristics of a product and would not specifically distinguish the words as referring to the products of Vittoria Coffee.

This decision means that it may be possible to include generic words or terms as part of a trademark if you are interested in adopting foreign words as part of your business name or marketing material.

Conclusion

To make sure you comply with trademark regulations and to make the process easier on yourself, it is wise to seek professional advice from a trademark specialist. Our team at LegalVision can help you apply for a trademark and advise you on terms you can include and those you should leave out.

Bianca Reynolds

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