A Critical Assessment of Trade Mark Distinctiveness and Descriptiveness Under Australian Law

Abstract

This paper considers some of the challenges Australian courts and the Australian Trade Marks Office have faced over the last couple of years when dealing with descriptive and laudatory word marks in the context of trade mark registration and cancellation proceedings. Descriptive and laudatory word marks tend to receive less attention than more exotic subject matter (such as colour, shape and product design marks), but the majority of decisions under the ‘distinctiveness’ ground contained in s 41 of the Trade Marks Act 1995 (Cth) that have come before Australian courts over the past few years have involved such marks. An analysis of these cases, as well as opposition decisions of hearing officers of the Trade Marks Office, shows that the law is far less settled than it might appear. Indeed, this appears to have been recognised by the High Court in granting special leave in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, a case involving two foreign word marks that raises fundamental questions as to how distinctiveness is to be assessed. Parts 2 and 3 of the paper provide a brief overview of the distinctiveness requirement in registered trade mark law, how the two stages of distinctiveness are assessed and the complex way in which s 41 operates, and will introduce some useful terminology for understanding the statutory tests. Parts 4 and 5 contain a critical analysis of recent Australian cases and decisions, showing that there are a number of problems with the current approaches to dealing with descriptive and laudatory marks, in relation to assessing both inherent adaptation to distinguish and factual distinctiveness. Part 6 contains some recommendations for legislative reform, as well as thoughts as to what brand owners might be able to do to overcome some of the challenges they are likely to face in seeking to secure protection for descriptive or laudatory word marks.