13. Common formats for trade marks

Date Published

Some words are commonly used in combination to identify the nature or extol the virtues of a particular product or service.  These include:

13.1  Mr, Mrs, Miss etc. trade marks

The inclusion of Mister, Mr, Mrs, Miss, Ms in a trade mark will not generally give rise to a section 41 ground for rejection. However, there are some circumstances in which a ground for rejection may be appropriate:

  • Where the trade mark consists of the word Mr, Mister, Mrs etc. followed by a common surname e.g. MR SMITH, MRS BROWN.

    Such trade marks should be examined on the basis of the criteria for registration of surnames. The commonness of the surname is only one of the factors that should be considered. (see paragraph 16 of this Part which refers to examination practice in relation to common surnames).
  • Where research clearly supports a ground for rejection. Examples may include MR AUSTRALIA for bodybuilding competitions and MISS BEAUTIFUL for beauty contests.


13.2  Dr trade marks

The inclusion of Dr or Doctor in a trade mark will not generally give rise to a section 41 ground for rejection. However, there may be some circumstances in which a ground for rejection may be appropriate:

  • Where the trade mark consists of the word Dr or Doctor followed by a common surname. Such trade marks should be examined on the basis of the criteria for registration of surnames. The commonness of the surname is only one of the factors that should be considered. For example, a section 41 ground for rejection is likely to apply to DR NGUYEN for education services (see paragraph 16 of this Part which refers to office practice in relation to common surnames).
  • Where the term Dr or Doctor is combined with another word and research clearly supports a section 41 ground for rejection. For example EYE DOCTOR for medical services.


13.3  My trade marks

"My" trade marks consist of the word “My” followed by a descriptive word/s associated with the applicant’s goods or services (e.g. MY PLUMBER for plumbing services and MY FLORIST for florist services).

Where research shows that the combination of the word “My” and word/s describing the goods or services (or some attribute of the goods or services) is a commonly used and understood expression, section 41 grounds for rejection should be raised. If research does not indicate this, section 41 grounds for rejection should not be raised.

When considering whether a phrase containing the word “MY” is capable of distinguishing (see table below), consideration must be given to the ordinary signification of the phrase.  Whether or not the trade mark is capable of distinguishing, will depend upon if the phrase is something ‘other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same phrase, or some phrase so nearly resembling it’.  Trade marks containing the word “MY” that form an expression that is not considered capable of distinguishing will require evidence of use to achieve acceptance under the provisions of section 41 of the Act. See examples in table below:

Trade mark

Goods and/or services

Section 41

PAY MY DEBT

Class 36: Financial services

Yes, indicates to the consumer that the trader’s financial services allow the consumer to pay their debt.

FIX MY COMPUTER

Class 37: Maintenance and repair services

Yes, indicates to the consumer that the trader provides maintenance and repair services that fix the consumer’s computer.

MY FLORIST, MY CHOICE

Class 44: Floristry services

No, the expression does not indicate the nature of the services being provided.

MY DAY, MY WAY

Class 44: Arranging of wedding services

No, the expression does not indicate the nature of the services being provided.

13.4  Ultra trade marks

"Ultra" is an ordinary term currently used as a superlative, denoting anything  which is claimed to be ultimate in its field. The word "ultra" on its own or in combination with an adjective or common suffix which describes a character or quality of the goods or services has limited inherent adaptation to distinguish.  Examples where a ground for rejection is warranted include ULTRA CREAMY for milk and ULTRA FAST for delivery services.

The word "ultra" followed by the name of the goods is considered to have a small amount of inherent adaptation to distinguish and therefore would require evidence that the trade mark does or will distinguish, or of any other circumstances, in order to be accepted.  Examples are ULTRA SHIRT and ULTRA PAPER (see Re Appn by John May Pty Ltd (1968) 38 AOJP 3440 (Ultracide); Re Spring Industries Inc's Appn (1991) 23 IPR 188 (Ultra suede); Re Courtauld Textiles' Appn (1994) 30 IPR 624 (Ultrabra)).

13.5  World and land trade marks

Trade marks consisting of WORLD, WORLD OF, LAND, LAND OF in combination with the name of, a direct reference to, or an attribute of, the designated goods or services will generally be considered prima facie capable of distinguishing.

However WORLD or LAND trade marks which form an expression commonly used to define a particular field of interest or activity will usually possess insufficient capacity to distinguish goods or services in that field.  Such trade marks will usually need evidence of use to achieve acceptance.

Trade mark

Goods and/or services

Section 41

CHEESEWORLD

Class 29: Dairy products, including cheese

Class 35: Retailing of cheeses and, dairy products

No – the trade mark is the combination of WORLD and CHEESE which is a direct reference to the goods / services.

LAND OF SHOES

Class 25: Footwear

Class 35: Retailing of footwear

No – the trade mark is the combination of LAND and SHOES which is a direct reference to the goods / services.

THEATRICAL WORLD

Class 41: Entertainment services

Yes – the expression is commonly used in relation to the field of dramatic arts and should legitimately be open for use by others.

WORLD OF BIG BUSINESS

Class 36: Financial services

Yes – the expression is commonly used in relation to business, commerce and finance and should legitimately be open for use by others.

13.6  Trade marks that contain a unit of time

Trade marks containing a unit of time such as DAY, WEEK or MONTH in combination with a word or expression that defines, describes or indicates a particular field of interest or activity may lack the inherent adaptation to distinguish particular goods and or services.

For example:

Trade mark

Goods and/or services

Section 41

Australian Art Day

Class 41: Entertainment services including arrangement of exhibitions and events.

Yes - ground for rejection likely to be appropriate as the phrase indicates entertainment services including events relating to/ enjoying/viewing Australian art.

Sick Kids Day

Class 14: Charity wrist bands; decorative pins

Class 26: Decorative ribbons

Class 28: Board Games

Class 36: Charitable fundraising

Class 41: Organisation of entertainment events for children.

Yes - ground for rejection likely to be appropriate as the services are indicative of the type and target audience of charitable fundraising in class 36 and entertainment in class 41. The goods claimed in classes 14, 26 are goods that are commonly associated with such events and are therefore also likely to attract a section 41 ground for rejection.

Beautiful Smiles Day

Class 16: Printed matter and publications relating to dental care and health care

Class 41: Education and entertainment services relating to dental care and health care.

No - ground for rejection not likely to be appropriate as the goods and services in classes 16 and 41 do not provide you with or enable you to have a beautiful smile.

European Fashion Week

Class 41: Fashion shows; production of fashion shows (entertainment).

Yes - ground for rejection likely to be appropriate as the entertainment services in class 41 relate to a week long event which features or showcases European fashion.

Melancholic Depression Week

Class 16: Printed matter relating to health education.

Class 41: Education and training in relation to mental health.

Class 44: Providing information in relation to mental health.

Yes - ground for rejection likely to be appropriate as all goods/services claimed in classes 16, 41 and 44 relate to a week long event which focuses on promotion/awareness of mental illness, specifically melancholic depression.

Reach Out Week

Class 36: Charitable fundraising in relation to making contact with old friends/lost family.

No - ground for rejection not likely to be appropriate as while it may allude to the purpose of the services, the phrase does not have a descriptive meaning in relation to the charitable services.