A trade mark protects a sign used to identify your goods or services to consumers. A trade mark can be registered if it is distinctive, does not conflict with a trade mark with earlier rights, and is not prohibited. It can be a name, image, logo, slogan, colour, smell, sound, shape (or a combination of these things), so long as it is capable of being distinctive in this manner. Some traders have opted to use words in languages other than English to create their distinctive brand. However, the principle in assessing the distinctiveness of a trade mark still applies.

Words

A large majority of trade marks contain or consist of words. A word must be inherently adapted to distinguish for it to be registered as a trade mark. That is, the word(s) used as a trade mark cannot be descriptive.

A word mark is descriptive if it cannot distinguish one trader’s goods and/or services from those of other traders. They are words that are required for use by other traders, including words used as indications of kinds, quality, quantity, intended purpose, value, geographical origin, obvious phonetic equivalents and misspelling of these. For example: the word HAIRDRESSER describes a person who is in the business of cutting or styling hair. A trader would not be granted the registration to use this word to indicate their hair dressing services because other traders legitimately need to use the word HAIRDRESSER to provide such services.

Words in a Language Other Than English

The same principles apply to trade marks consisting of foreign words. A foreign word (or set of words) may not be considered distinctive if it is well known in Australia. Again, a trade mark in foreign words is unlikely to be registrable if the foreign words have a meaning which is likely to be required for use by other traders.

It is interesting to note that in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, the High Court held that a foreign word may be considered distinctive if a significant proportion of the Australian population do not know the words, even though the words may be known within certain industries. The legal issue in this case was whether two Italian words, “Oro” meaning gold, and “Cinque Stelle” meaning five stars, were inherently adapted to distinguish and therefore capable of registration as trade marks in Australia.

Conclusion

Registering a trade mark is not always a simple task, which is why it may be a good idea to engage an IP lawyer to complete the process for you. An IP lawyer would be able to assist with assessing whether it is likely your trade mark may be subject to an adverse report, perform a conflict search, and provide other services that will ease your trade mark registration process. Our team of IP lawyers have extensive experience in trade marking in Australia and internationally, and would be happy to assist. To speak with one of our IP lawyers today, contact LegalVision on 1300 544 755.

Lisa Lee

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