How to Tell if Your Trademark is Distinctive

The most important asset of your business is its brand.  No matter how good your goods or services are, your business will struggle unless your customers can tell your goods and services from those of your competitors.

One key way to protect your brand is to register your trademark.

Distinctiveness

Not any business name or logo can be registered as a trade mark.  The trade mark must be distinct and individual.  The name of a region or a general service, for example Melbourne Lawyers, is not sufficiently distinct to be registered as a trade mark.

A lack of distinctiveness is also a ground for a competitor to oppose your registration or even cancel your registration after it has been accepted.

What has been found to be Distinctive?

As mentioned in our recent article, you may trademark a logo, brand name, word, picture, sound or scent.

Many cases regarding trademark registration turn on whether the mark is distinctive, particularly where the applicant is trying to trademark a generic name or a colour.

Earlier this year, IP Australia saw the East 9^th Brewing Co lodge an application to register the colour of their beer. They sought to register an orange to brown colour on the basis that it is unique to the beer they produce. While the application is still being considered, it is expected other breweries and members of the Independent Brewers Association will object to the trademark, arguing that the colour is not distinctive and is being used by the majority of breweries.

This case seems to have stemmed from the more well-known case of Cadbury, seeking to trademark the colour purple which appears on their packaging. The application was opposed by Nestle who argued that they use a similar colour in their products and allowing the registration would create a monopoly in the market. Cadbury were successful in showing to the Court that the colour purple has been used for over 100 years on their packaging and consumers buying chocolate products often did not read the packaging but identified with the colour.

These cases really hit home the idea that the trademark must identify your goods or services and not be so generic that similar businesses will want to use that trademark.

Types of Distinctiveness

So now you know that your trademark has to be distinctive to be registered. But what does distinctive mean?

In understanding what a distinctive trademark is, you must be able to differentiate between the two types of distinctiveness:

1. Inherent Adaptability: this is where the mark itself is distinctive. Usually marks that fall within this category are words or images that are completely invented, such as ‘Microsoft’. This category will generally exclude marks which consist wholly of a sign ordinarily used to indicate the kind, quality, intended purpose or geographical origin of goods or services.
2. Acquired Distinctiveness: on the other hand, acquired distinctiveness is where the mark already exists but consumers associate the mark with your goods or services. For instance, the word ‘target’ may refer to something you aim at, but it has acquired distinctiveness in the retail shopping chain Target.

The category of distinctiveness your trademark falls within will determine the test applied by the Registrar. If your trademark has acquired distinctiveness, you may point to your prior use of the mark to show that it is distinctive. If your trademark is inherently adapted to distinguish, the mark itself will be distinctive.

How do I tell if my Trademark is Distinctive?

There is no straight-forward test to determine if your trademark is distinctive, it is different for each case.

However, here are some hints you can use which may point to your trademark not being distinctive:

1. The mark is already being used;
2. It directly describes the goods or services you are offering;
3. Your mark is more likely to be distinctive if it does not contain a geographical location, such as ‘The Lonely Fitzroy Bakery’;
4. The mark merely uses adjectives to describe the goods or services you offer, such as ‘The Best Recruiters’. This may not be distinctive as other recruiting businesses are likely to want to use that mark to describe their services;
5. If your mark contains your name, you should consider whether your name or initials are common and will want to be used by similar businesses.

If you need any help with your trademark or trademark registration, please contact an IP lawyer from the Taurus Legal Management Team on 9481 2000.