22.26. Composite trade marks

Date Published

Trade marks comprising any combination of words, devices, shapes, sounds, scents and/or colour elements must satisfy the requirement that, when taken as a whole, they are capable of distinguishing designated goods or services in the marketplace.  It could be said, however, that combinations are likely to have a higher capacity to distinguish and are more likely to be prima facie capable of distinguishing.

In this regard, Lawrence J. in Diamond T noted at 380:

In determining the question of (whether a mark is adapted to distinguish the applicant's goods from goods of other manufacturers) it is, in my judgement, immaterial to consider whether any of its component parts are or are not registrable by themselves.

Also note Dodds-Streeton J comments in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 at 61:

It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive.

In this case the composite trade mark was found to be inherently adapted to distinguish in respect of retailing services in class 35 notwithstanding the descriptive nature of some of the constituents of the trade mark.

On the other hand, composite trade marks consisting of a prominent feature in itself not registrable, such as a geographical name or a surname, and surmounted by mere embellishments such as scrolls or a plain geometric device, would not qualify for prima facie acceptance as a composite trade mark.  In this regard, attention is directed to the remarks of Branson J in the Oregon at 507:

It seems to me that I must conclude that the particular manner in which the applicant's trade mark presents the word "Oregon" does not give it inherent adaptability to distinguish the designated goods, the word "Oregon" alone lacking such inherent adaptability.  I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient…. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.  I find that the applicant's trade mark is not inherently adapted to distinguish the designated goods from the goods of another person.

A composite trade mark will not necessarily be capable of distinguishing simply because it contains a registrable element or even a trade mark which is already registered.  The relative proportions of the elements within the trade mark will affect the ability of the trade mark, taken as a whole, to distinguish the applicant’s goods or services. The overall impact of the trade mark on the potential purchaser should be considered.

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