22.9. Words

Date Published

Words fall within the definition of a sign and the great majority of trade marks contain or consist of words.  Descriptive words which are likely to be desired for use by other traders lack inherent adaptation to distinguish one trader’s goods and/or services from those of other traders. To be registrable, applications consisting solely of such words would need to be supported by evidence establishing that the trade mark did distinguish at the time of filing.

Descriptive words which have a low level of inherent adaptation to distinguish are also not prima facie capable of distinguishing and evidence and/or consideration of other circumstances would be needed to enable acceptance of such applications.

9.1 Words not inherently adapted to distinguish

These may include words which are used as indications of kind (including the name of the goods or services themselves), quality, quantity, intended purpose, value, geographical origin, obvious phonetic equivalents and misspellings of these, or indications as to the time of production of the goods or the rendering of the services.  

Traders should not be granted a monopoly in words such as these which other traders legitimately need to use in describing or extolling their goods or services or to indicate the origin of their goods or services (unless they are able to establish that the trade mark did distinguish at the time of filing).  As Lord Parker stated in the W & G Du Cros Ltd’s Appn [1913] 30 RPC 660 at 672 (quoted by Kitto J in Michigan at 513):

The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend on whether other traders are likely, in the ordinary course of their business, and without any improper motive, to desire to use the same mark or some mark nearly resembling it, upon or in connection to their own goods.

9.2  Kind

This includes the name of the goods or services claimed and any words recognised as indicating size or type.  Similarly, generic descriptions such as the name of a plant variety, and words which are the only available description for the goods would lack any inherent adaptation to distinguish (see Eutectic Corp v Registrar of Trade Marks (1980) 32 ALR 211). The words SEDAN and STATION WAGON are commonly used to indicate vehicle size in the auto trade and would not be acceptable for cars. Words like LARGE and SMALL would be difficult to register for any goods or services.

For guidance, see the Whopper case (1973) 128 CLR 417 (‘Whopper’); Matsushita Electrical Industrial Co Ltd's Appn (1989) 15 IPR 125 (‘Junior’); Colgate & Co's Appn (1913) 30 RPC 262 (‘Ribbon Dental Cream’); Associated Biscuits Ltd's Appn (1984) IPD 6133 (‘Sticklets’); Red Tulip Chocolates Pty Ltd's Appn (1984) 2 IPR 388 (‘Windsor Sticks’).

9.3  Quality

Laudatory words or word combinations such as SUPERIOR, GOOD, BEST and NUMBER ONE are indications of quality commonly used by traders to extol the virtues of their goods and/or services and are devoid of inherent adaptation to distinguish. Other words or word combinations such as CLASSIC, TIMELESS, WARM or GREAT TASTING would not be inherently adapted to distinguish some goods or services but may be capable of distinguishing others.

For guidance, see Joseph Crosfield & Sons Ltd's Appn (1909) 26 RPC 837, (‘Perfection’); Corning Glass Works Appn (1985) IPD 8061 (UK) (‘Magic’); Hawke (Aust) Ltd's Appn (1988) AIPC 90-525 (‘Timeless Creation’); Thorne & Co Ltd v Sandow Ltd (1912) 29 RPC 440 (‘Health’).

9.4  Quantity

Indications of quantity are frequently used by traders for a wide range of goods and services and are not prima facie capable of distinguishing. Indications of amount, including reference to numerals, are needed to indicate volume, area, model or batch number, and would be unlikely to function as trade marks (see Registrar of Trade marks v Muller (1980) 31 ALR 177 and also paragraphs 22 and 23 of this Part).

9.5  Intended purpose

Some words that describe the function of a range of goods or the result of a range of services are not inherently adapted to distinguish.  For example: STICKS TO METAL describes a use to which glue can be put; ROACH FREE describes the end result of pest eradication services.  In respect of printed material and software, this would include trade marks which consist of a mere description of the subject matter contained therein.

For guidance, see Wilkinson Sword Ltd's Appn (1989) 12 IPR 138 (‘Pivot’); Samboy Products Appn (1960) 30 AOJP 579 (‘Barbeque’); Plastic Inc's Appn (1986) 7 IPR 111 (‘Hi-Heat’); Jove Publication Inc's Appn (1984) IPD 6136 (UK) (‘Second chance at love’); Intermed Communications Inc's Appn (1985) AIPC 90-256 (‘Nursing 79’); "The Chef" trade mark [1979] RPC 143 (Board of Trade).

9.6  Value

Words which emphasise the worth, importance or value of a product or service are not generally inherently adapted to distinguish.  Examples are TWO FOR ONE, MORE and WORTH THEIR WEIGHT IN GOLD (see Keystone Steel & Wire Co's Appn (1924) 19 AOJP 750 (‘Square Deal’).

9.7  Time of production

Trade marks consisting of references to a time frame when the goods were produced or when the services are to be available are not inherently adapted to distinguish. This could include expressions such as READY IN ONE HOUR for photographic development, VINTAGE 1990 for wines or AUTUMN ISSUE for magazines.

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