6. Trade marks having no inherent adaptation to distinguish

Date Published

From a practical point of view signs that are considered not to any extent inherently adapted to distinguish the designated goods/services from the goods or services of other persons are those that:

  • are presently in common use and serve directly to designate the goods or services; or
  • are otherwise clearly required by other traders in the ordinary course of their business.

It is important to note here that the fact that a term is not in use in the relevant trade should be given considerable weight and will usually preclude a finding that it is not to any extent inherently adapted to distinguish.

Trade marks that have no inherent adaptation to distinguish the goods or services of one trader from those of other traders include words which are: geographical names like OREGON, MICHIGAN and OXFORD; highly laudatory words like PERFECTION and BEAUTIFUL; a word such as EUTECTIC which is the only word applicable to particular goods; and words which are apt for normal description of the goods or services concerned as WHOPPER was found to be in relation to hamburgers.

6.1  The Notes accompanying section 41

The following note in section 41 is intended to help the reader to understand the contents and legal consequences of the provision.

Note 1: Trade marks that are not [to any extent] inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

a. the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

b. the time of production of goods or of the rendering of services.

This is a very broad statement but does provide a good guide to trade marks that will not be considered, prima facie capable of distinguishing the applicant's goods and/or services. The words consist wholly of are a reminder that, if the trade mark is a composite trade mark or is represented in a manner that is striking or unusual, this may overcome the problem that the words or devices within the trade mark are otherwise not inherently adapted to distinguish the goods or services of one trader from those of another.

Prior to the Acts Interpretation Amendment Act 2011 it had long been the fact that although notes to the Act may draw attention to information that may assist the reader in the understanding of the contents or legal consequences of certain provisions or how to comply with them, such notes were not actually part of the Act. Courts could take them into account when deciding on the meaning of a provision but were not obliged to do so (see Cranberry Classic at 589).

The Acts Interpretation Amendment Act 2011 amended section 13 of the Acts Interpretation Act 1901. The amendments make it clear that all material in an Act, from the first section to the end of the last Schedule, is part of the Act. This includes explanatory notes.

A ground for rejection may be raised in respect of the matters mentioned in the notes appended to section 41. However when raising a ground for rejection based on these issues examiners should always take care to phrase the ground for rejection in such a way that it is clear that, while the contents of the note may form the basis of the ground, the reason for raising it is the trade mark's lack of inherent adaptation to distinguish.

6.2  Distinctive in fact

To achieve acceptance for a trade mark that is considered to be totally lacking in inherent adaptation to distinguish, the applicant must file evidence of use which establishes that the trade mark did distinguish the designated goods before the relevant filing date. Additional evidence later than this date and material relating to other circumstances may also be filed, but the crucial matter is the demonstration of the trade mark being distinctive in fact as at the application's filing date.

The term distinctive in fact does not appear in the legislation, but appears at page 41 of the report Recommended Changes to the Australian Trade Marks Legislation. In Oregon Branson J at 503 quotes the following excerpt from that report:

it is presently possible to establish that a mark is distinctive in fact and yet it will be held in law to be not registrable, as there is a requirement that a mark possess some degree, however small, of inherent adaptedness to distinguish. Marks falling into this category are typically geographical names and laudatory or descriptive words, and therefore likely to be used by other traders in the legitimate description of their goods or services." (Emphasis added).

Her Honour makes it clear that the term is an appropriate one to use in relation to trade marks with no inherent adaptation to distinguish.

If the evidence demonstrates that the trade mark is distinctive in fact as at the application's filing date, the trade mark will be taken to be capable of distinguishing.

It should be noted however, that a mere demonstration of use does not necessarily equate to distinctiveness.  In British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 (‘Treat’) at 302 Jacobs J commented:

There is an unspoken and illogical assumption that 'use equals distinctiveness'.  The illogicality can be seen from an example:  no matter how much use a manufacturer made of the word 'Soap' as a purported trade mark for soap, the word would not be distinctive of his goods.  He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark.

In Oregon at 509, Branson J refers to Justice Jacob's observations in Treat when she said:

Jacobs J observed, no doubt accurately, … that evidence of promotion and use does not, without more, demonstrate distinctiveness.  Nonetheless, common sense suggests that significant promotion and use of a trade mark among people concerned with the relevant market will have a tendency to enhance, rather than diminish, the trade mark's capacity to distinguish the goods in respect of which it is used from the goods of others.  Certainly, the absence of evidence of promotion and use is likely to assume significance where distinctiveness resulting from use is in issue.

In the Oregon case itself, in addition to evidence of promotion and 15 years' use, the applicant placed before the Court affidavit evidence from consumers, wholesalers and retailers of its goods. The overall impact of such evidence for her Honour was an indication that persons concerned with relatively small-scale power cutting equipment associated the word OREGON with a particular range of such goods.  Her Honour went on to say at 509:

It is not, in my view, necessary as a matter of law for a statistically sound market survey to be undertaken before it can be established that a trade mark does distinguish an applicant's goods from the goods of another person. In each case the evidence relied on by the applicant is to be evaluated in the light of any evidence tending to the contrary effect and having regard to the evidence which the applicant might reasonably be expected to be able to obtain in all the circumstances of the case.

The applicant must be able to show that as at the filing date of the application the public had come to regard the sign as a badge of origin. For more information about evidence requirements for trade marks with no inherent adaptation to distinguish see: