22.6. Trade marks having no inherent adaptation to distinguish

Date Published

Trade marks that have no inherent adaptation to distinguish the goods or services of one trader from those of other traders include signs which are: pictorial representations of the goods or services, 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.​​​​​​​

Amended Reasons

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