Under section 17 of the Trade Marks Act 1995 (Cth), a trade mark is defined as a sign used, or intended to be used, to distinguish goods or services. Accordingly, a trade mark’s registrability lies in its inherent capacity to distinguish one trader’s goods and/or services from those of others. In fact, under section 41 of the Trade Marks Act 1995 (Cth), an application must be rejected if the mark in question is not capable of distinguishing. Marks that are recognised as not being able to distinguish are those which indicate the value, quality, kind, intended purposes, geographical origin or some other characteristic of the goods and/or services.

Thus the question arises, what is the registrability of various kinds of marks and, in particular, letter and word marks?

Letter marks

  • Single letter trade marks: will generally not be capable of distinguishing goods and/or services unless they are incorporated into a highly stylised form or have a unique get up.
  • Two letter trade marks: will be capable of distinguishing only if they relate to goods and/or services that are narrow or highly specialised. Alternatively, if the letters are combined in an unusual way, this may in itself be sufficient.
  • Trade marks consisting of three or more letters: will usually be capable of distinguishing a traders goods and/or services from those of other traders unless the words themselves are descriptive in nature.
  • Acronyms and abbreviations: may be capable of distinguishing if they are not commonplace or if they form part of a composite mark. In terms of composite marks, it is the overall impression that the mark conveys that is decisive.
  • Punctuated word trade marks: may or may not be inherently adapted to distinguish. The more letters that are used, the more likely it is that the mark will be considered a word, as opposed to a series of letters, e.g. S.W.A.N would be deemed to read “swan”.

Word marks

  • Trade marks that describe the quality, quantity, value or time of production; of the goods or services in question will not, without more, be capable of distinguishing.
  • Misspellings of words and combinations of known words: words consisting of simple combinations, misspellings or minor changes are not inherently adapted to distinguish. A trade mark that falls within this category may be registered if the word construction contains an appropriate degree of inventiveness.
  • Trade marks that contain words in other languages: will be capable of distinguishing if the non-English word itself is novel. If the word is merely descriptive and well known in Australia, it may fall short of the registrability threshold.
  • Names: trade marks consisting of a person’s name may or may not be capable of distinguishing the trader’s goods and/or services, it all depends on the commonality of the name. Names that have an SFAS value of 750 or more tend to indicate that the name is common and thus, without more, not registrable.

Conclusion

Would you like to know more about the registrability of various types of trade marks? Our team of experienced LegalVision IP lawyers would be happy to assist you with any queries that you may have. Contact us today to see how we can help.

Vanja Simic

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