22.13. Common formats for trade marks

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

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:

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.

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: