2. Connotation

Date Published

2.1

Connotation is not defined in the Trade Marks Act 1995 (the Act). The meaning for practical purposes has been taken from the ordinary dictionary definitions as set out below:

Connotation Macquarie Dictionary

  1. the act or fact of connoting
  2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation)


Connotation Oxford English Dictionary

  1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.


It is clear from these definitions that the word connotation refers to something implied in a trade mark, in addition to its essential or primary meaning. This has been supported and expanded upon by various Hearings decisions and the courts.

In respect of section 43, connotation has a wide meaning beyond the above definitions and includes direct statements. In Mount Everest Mineral Water Limited v Himalayan Spring Mineral Water [2010] ATMO 85, Hearing Officer Wilson stated:

if a trade mark consists of a direct statement that the goods will originate from a particular region or outlines the nature of the goods, and there is scope within the goods/services for that statement to be misdescriptive, confusion will result.

The role of denotation was also discussed. At 13:

….potential consumers would firstly (and primarily) view the words HIMALAYAN SPRING MINERAL WATER - BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS as a trade mark that denotes a connection between the applicant and its mineral water products.

Accordingly, the denotation is firstly as a trade mark of the applicant, despite any descriptive matter contained within. The operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the goods. It does not follow that all trade marks containing descriptive matter would attract a section 43 objection. Only if there is a real and tangible danger that the consumer’s expectations may turn out to be false and result in confusion, would section 43 be triggered.

Denotation and connotation are also discussed in Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174.  Katzmann J at 111:

plainly, if “connotation” in s 43 is to bear its ordinary meaning (and the respondents did not argue otherwise), then a distinction is to be made between the denotation of the mark and its connotation.

….at [163] of her reasons, the primary judge expressly approved of the approach taken by the Registrar’s delegate, that the denotation of “Primary Health Care” in this context is as a trade mark denoting a connection between the applicant and its medical centres. In my respectful opinion, subject to the qualification that “Primary Health Care” denotes a connection between the applicant and the designated services (rather than a connection between the applicant and its medical centres), her Honour was correct to do so. Her Honour went on to hold (at [164]) that the connotation in the marks is that the applicant provides “first level or first contact health care”.
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2.2

A connotation may result from the whole trade mark or from a part of the trade mark. It may result from a dictionary meaning or from a connection in the minds of the buying public with some person, place or thing.

2.3

A connotation must arise from the trade mark itself, and not through a comparison with another trade mark.  Such comparisons are dealt with under the provisions of section 44 of the Act, and discussed in detail in Part 26 of this Manual.  


2.4

The presumption of registrability applies to section 43.  The Registrar must be satisfied that a ground for rejection exists before section 33(3) can be applied to reject the trade mark.  If there is doubt that a connotation exists, then the ground for rejection should not be raised.