22.14. New terminology and "fashionable" words

Language and its usage are constantly changing. There are many words used today which were not in vogue or did not even exist five years ago, or which have changed their meaning with the passage of time.  Examiners should take this into account when assessing the registrability of trade marks and should try to be aware of emerging trends in the use of language.

For example, market interest in environmental issues has been characterised by use of words such as "Green" and "Ozone", and abbreviations such as "Enviro" and "Eco".

The popularity of new words or phrases is not restricted to the environment.  Many areas including modern technology, the Internet, and fashion develop new language and new uses of existing language which quickly become generic.

14.1  E trade marks

With the increasing use and importance of electronic forms of communication, in particular the Internet, to conduct business and advertise goods and services, it has become increasingly commonplace for traders to adopt trade marks featuring the prefix "e". The prefix is commonly understood to mean electronic and it is often used, in combination with a word or phrase, to indicate goods which incorporate electronics or electronic technology or services provided by electronic means, that is, online or via the Internet.  As such, a trade mark consisting only of the prefix "e" and a word or phrase which has a direct reference to the goods or services claimed will be considered to have little or no inherent adaptation to distinguish.

Examiners will need to consider if the material in the trade mark, apart from the prefix "e", has any inherent adaptation to distinguish. The presence of the prefix "e" in a trade mark is unlikely to add to the trade mark's capacity to distinguish unless it is rendered in a very distinctive way.

For example, a ground for rejection would be raised against e-TOYS in respect of a broad claim for class 28 goods as it would be considered to have a reference to electronic toys.  Similarly, it would have direct reference if the specified services were the retailing of toys.

Trade marks such as e-COMMERCE for business services and e-PRINT for printing services are not prima facie capable of distinguishing.

However, if a trade mark consists of the prefix "e", and a word having no direct reference to the specified goods or services (such as e-magic for non-magic related goods/services), or if the reference is allusory (such as e-wonder), then the trade mark will be prima facie capable of distinguishing.

14.2  Domain names

A domain name is the address which is entered into a web browser’s address field to locate resources on the Internet. It is typically a combination of standard address code material and an identifier.  

Standard address code material points to directories, sub-directories and servers and is common to many domain names.  Examples of standard address code material are: "http://", "www.", "net", "org", "com", "shop" or "au" and punctuation symbols "~", "." or "/".

An identifier may be an individual's name, an existing trade mark, a company name, a product name, a topic or any other combination of letters and numerals and is unique within any given domain name registration system.

In a domain name, it is the identifier which enables one domain name to be differentiated from another, and may lend a domain name some trade mark significance.  In other words, it is the identifier which is the distinguishing element of a domain name, and this is the element which should be considered when assessing the inherent adaptation to distinguish.

Where a trade mark consists only of standard address code material and an identifier it will not be prima facie capable of distinguishing if the identifier is a word, phrase or combination of letters and/or numbers which other traders would wish to use in the normal course of their trade. An example of when a ground for rejection should be raised is the domain name WWW.SYDNEY.COM. Sydney is a well-known geographical location and should be available for other traders to use to indicate the origin of their goods and/or services.  Similarly trade marks such as SMITH.COM or BESTPRICE.COM should attract a ground for rejection as Smith is a common surname and best price is a laudatory expression.

If a domain name is part of a composite trade mark, the trade mark may be prima facie capable of distinguishing due to the overall presentation, depending on the relative proportions, arrangement etc. of the material within the trade mark as a whole. For more information about composite trade marks see paragraph 26 of this Part.

Where a section 41 ground for rejection has been raised, the fact that the applicant is the registrant or authorised user of the domain name is not sufficient on its own to overcome the ground for rejection. However, if the applicant has been using the domain name for a sufficient period of time and it has developed the secondary meaning of indicating trade origin, this may support applying the evidence provisions of section 41. When assessing evidence in relation to domain names examiners should be mindful that use does not always equal distinctiveness.

A section 43 ground for rejection will apply if the applicant for a trade mark containing material likely to be viewed as a domain name is not also the registrant (or authorised user) of  that domain name. For more information in relation to domain names and section 43 see:

• Part 29 Trade Marks Likely to Deceive or Cause Confusion - 4.4 Marks suggesting endorsement, licence or approval

14.3  Smart and Intelligent trade marks

The ordinary dictionary meanings of the words "smart" or “intelligent” should be taken into account when examining trade marks incorporating them, as should the surname significance of Smart.  However, the words are now ones which many traders wish to use, particularly in relation to goods which utilise, or are a product of, modern technology.  In relation to these goods the words are understood to mean that the goods have one or more of the following features in some form or degree:

• incorporate artificial intelligence
• are computerised or utilise processors or other mechanisms of control
• are programmable
• have automated functions

• are capable of processing information.

If the designated goods incorporate any of the features mentioned above, and the trade mark consists only of the word SMART or INTELLIGENT, then a ground for rejection should be raised.

If a trade mark consists of the word SMART or INTELLIGENT combined with a word having some reference to the goods or services, then it is unlikely to be sufficiently inherently adapted to distinguish. For example SMART LIGHTS would not be prima facie capable of distinguishing on lighting apparatus or the installation of lighting apparatus and therefore a section 41 ground for rejection would be appropriate.

Trade marks consisting of the combination of a word that has some reference to the goods or services, followed by the word SMART or INTELLIGENT, will usually be prima facie capable of distinguishing. For example LIGHT SMART would be inherently adapted to distinguish lighting apparatus or the installation of lighting apparatus and therefore a section 41 ground for rejection would not be appropriate.
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14.4  Phonewords

Phonewords (or SMS words) include 1300, 1800, 13 and 197 phone numbers that are presented alphabetically using the letters of a telephone or mobile key pad (e.g. 1300 GROCER, 1800 RABBIT and 13 BAGS).

A section 41 ground for rejection will apply in relation to trade marks that simply consist of 13/1300/1800/197 and other descriptive or non distinctive elements (in the same way that those elements on their own would attract a ground for rejection). The ground for rejection applies irrespective of whether the trade mark is a valid phoneword. See 1300 Australia Pty Ltd v 1800 Blinds Pty Ltd [2008] ATMO 57.

Examiners will need to consider if the material in the trade mark, apart from the 13/1300/1800/197 element, has any inherent adaptation to distinguish. For example, 1800 RABBIT is not considered to any extent inherently adapted to distinguish the sale of pet rabbits and a section 41 ground for rejection would be appropriate.

Phonewords appearing in a composite trade mark containing additional distinctive elements will usually have sufficient inherent adaptation to distinguish and not attract a section 41 ground for rejection. For example:

This composite trade mark is considered to be prima facie capable of distinguishing in relation to the sale of pet rabbits.

Where a section 41 ground for rejection has been raised, the fact that the applicant is the owner or authorised user of the phoneword is not sufficient on its own to overcome the ground for rejection. However, if the applicant has been using the phoneword for a sufficient period of time and it has developed the secondary meaning of indicating trade origin, this may support applying the evidence provisions of section 41. When assessing evidence in relation to phonewords examiners should be mindful that use does not always equal distinctiveness.

A section 43 ground for rejection will apply if the applicant for a trade mark containing material likely to be viewed as a phoneword is not also the owner (or authorised user) of  that phoneword. For more information in relation to phonewords and section 43 see:

• Part 29 Trade Marks likely to Deceive or Cause Confusion - 4.4 Marks suggesting endorsement, licence or approval

14.5  Hashtags

A hashtag is an identifier which is added to a social media post or message (such as a tweet) which connects it to a common theme.  It typically starts with the # symbol and follows with a word or string of words (with no spaces) that link it to the common theme.

The word/s after the hash symbol may be just about anything.  They may be invented words, they may refer to an individual's name, an existing trade mark, a company name, a product name, an event or place, an occupation, a hobby, and so on.  The very nature of a hash tag is often descriptive as it helps link posts with a common theme.

In a similar way to domain names, it is the words following the # which are the distinguishing element of a hashtag, and this is the element which should be considered when assessing the inherent adaptation to distinguish.

Where the trade mark consists of a # followed by descriptive or non-distinctive elements it will not be prima facie capable of distinguishing.  An example of when a ground for rejection should be raised is #SYDNEY as Sydney is a well-known geographic location and should be available for other traders to use to indicate the origin of their goods and/or services.  Other examples that would attract a ground would be #PLAYNETBALL for sporting services or #FINDADATE for dating services.

If a hashtag is part of a composite trade mark, the trade mark may be prima facie capable of distinguishing due to the overall presentation, depending on the relative proportions, arrangement etc. of the material within the trade mark as a whole. For more information about composite trade marks see paragraph 26 of this Part.

If the applicant has been using the hashtag for a sufficient period of time and it has developed the secondary meaning of indicating trade origin, this may support applying the evidence provisions of section 41. When assessing evidence in relation to hashtags, examiners should be mindful that use does not always equal distinctiveness.

14.6  Cryptocurrency

Cryptocurrency is a digital currency in which encryption techniques are used to regulate the generation of units of currency and verify the transfer of funds, often operating independently of a central bank. Many organisations are now creating cryptocurrencies as alternatives for traditional money or payment systems and these cryptocurrencies can now commonly be used to pay for a variety of goods/services.

Generally, the name of a cryptocurrency will be inherently capable of distinguishing unless research demonstrates that the term:

• is used to describe an aspect of the cryptocurrency (e.g. altcoin - a type of cryptocurrency viewed as an alternative to BitCoin. It is likely that other traders would desire to use the term without improper motive in relation to the services), or
• is the name of an underlying technology used in cryptocurrencies (e.g. blockchain).

Particular care should be taken when doing s41 research for any marks that have claimed goods in:

• Class 9 (Cryptocurrency exchange software, Cryptocurrency wallets, Cryptographic apparatus are all picklisted items)
• Class 36 (Cryptocurrency investment consultancy)

Class 42 (Cryptocurrency engineering, Cryptocurrency mining, Cryptographic engineering, Data cryptology services, Digital signature verification services (electronic cryptology services), Electronic signature verification services (electronic cryptology services).

Considering that the distinctiveness of a trade mark is assessed at the time of filing is essential to determining whether a trade mark is inherently adapted to distinguish in relation to cryptocurrency.