23.5. Specific evidence requirements for trade marks with no inherent adaptation to distinguish

Some trade marks have no inherent adaptation to distinguish the applicant's designated goods or services from the goods or services of other persons.  The burden upon the applicant to provide evidence of use for these trade marks is consequently much greater than it is for those which are to some extent inherently adapted to distinguish.

5.1  What kind of trade marks are these?

This category of trade marks includes technical terms or devices, words such as 'cheap' or 'excellent', and many geographical names that have a direct link to the goods and/or services provided.  

Note 1:  Trade marks that are not 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.

The following list of decided cases show examples of trade marks of this kind:

• Eutectic Corp v Registrar of Trade Marks (1980) 32 ALR 211 ('Eutectic');

• Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1 ('Oxford');

• Blount Inc v The Registrar of Trade Marks (1998) 83 FCR 50 ('Oregon');

• Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 ('Cranberry Classic');

• Philmac Pty Limited v the Registrar of Trade Marks [2002] FCA 1551 ('Terracotta').

5.2  What does the evidence need to establish?

Where a trade mark falls into this category, it must be rejected under section 41 unless the applicant can establish through evidence that, at the date of filing, the mark did distinguish the designated goods or services from those of other persons. If the applicant can establish this fact, then the trade mark is taken as being capable of distinguishing and may be accepted for registration.

This is much more stringent than the evidence requirements for trade marks which are to some extent inherently adapted to distinguish. It cannot be based on intended use, but on established use prior to filing. There is no ability to consider other circumstances. It places a heavy onus on the applicant to demonstrate that the trade mark designates only its goods or services in the mind of the relevant buying public and that the sign has attained a secondary meaning, that being one of trade source. It will not usually be enough to establish the extent and duration of the applicant's own use. It may also be necessary to establish the nature of the perception enjoyed by the trade mark in the market place. The applicant will need to establish to the Registrar's satisfaction that ordinary consumers associate the trade mark with the applicant as being the trade source for the particular goods and/or services.

5.3  Evidence must show use in Australia before the filing date

Acceptance of a trade mark that is not to any extent inherently adapted to distinguish is on the basis that the trade mark is already distinguishing the applicant's goods/services in the Australian marketplace.  To be able to demonstrate this, the use must be before the filing date.  Use after that date will not be considered.  Evidence of use overseas could only be an adjunct to the main evidence demonstrating use in Australia, and would not of itself be convincing.

5.4  The scope of a registration for a trade mark that is not to any extent inherently adapted to distinguish must reflect actual use

As acceptance under this provision is on the basis of established distinctiveness, the scope of the registration must reflect the use demonstrated in the evidence.  This means that the specification, geographical area or even the trade mark may need to be amended (if acceptable under section 65) to conform with the use demonstrated in the evidence.

5.4.1  Geographical limitations:

A geographical limitation should be imposed if the evidence clearly shows that the trade mark distinguishes the applicant's goods or services in a particular area only.

The form of endorsement normally applied is as follows:

Registration of this trade mark is limited to the State of <   >.

5.4.2  Restrictions to the goods and services specification

Applications proceeding despite being not to any extent inherently adapted to distinguish require a demonstrated reputation for particular goods/services.  Therefore, the specification should be restricted to accord with the actual evidence of use.  A wider specification is not acceptable.

5.4.3  Colour restrictions

If the evidence demonstrates use only in specific colours, the trade mark should be restricted to those colours.  Refer to paragraph 4.7.2 for information on the endorsement in these circumstances.

5.5  Aids for assessing evidence of use for trade marks not to any extent inherently adapted to distinguish

As an aid to assessing evidence of use, it is appropriate to answer the following questions for applications severely lacking in, or devoid of, inherent adaptation to distinguish. While each one should be carefully considered, it is not essential that they all be answered in the affirmative and there is no authority for taking any one of them, in isolation, as mandatory. Conversely, the extent to which any of them is undecided or answered in the negative must weigh against the applicant in the final decision, which is simply one of fact:

• Is the sign used as a trade mark?

• Has the applicant clearly promoted the sign as a trade mark?

• Does the evidence show that the sign is, as a matter of fact, operating in the marketplace as an indication of trade origin?

• Is the sign accepted by a substantial majority of persons in the relevant field as a trade mark?

• In the case of a sign applied to everyday consumer goods/services, has the trade mark become almost a 'household sign'?

• Has the primary meaning of the sign been displaced to the extent that, in relation to the relevant goods/services, it has come to denote those of the applicant?

• Does the evidence overall show that the sign does, in fact, distinguish the goods/services of the applicant?

5.6  Additional support for evidence regarding trade marks not to any extent inherently adapted to distinguish

As the applicant for a trade mark which is not to any extent inherently adapted to distinguish needs to demonstrate that the buying public already recognises the trade mark as an indicator of trade source, some additional information is often useful. This can be in the form of supporting declarations or customer surveys.

5.6.1  Supporting declarations

Supporting evidence from other persons of standing in the trade are useful for applications falling into this category.  This evidence should also be in the form of a declaration. A sample layout for guidance in the presentation of trade declarations is given at Annex A3 of this Part.

5.6.2  Customer surveys

Professionally conducted customer surveys may be provided. However, while these are useful, there is no absolute requirement that they be supplied.  Justice Branson, in the Oregon decision, supra, commented at 62:

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.