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Australian Trade Mark Applicants Beware: descriptors in trade marks could narrow your scope of protection

10 May 2021
belinda sigismundi
Read Time 3 mins reading time

In the last couple of weeks, we have seen a dramatic change in the way IP Australia has been assessing Headstart and Standard trade mark applications. It appears that IP Australia is taking a far more conservative view in relation to objections raised pursuant to section 43 of the Trade Marks Act 1995, on the basis that the trade mark is likely to “deceive or cause confusion”. The actual wording of section 43 reads as follows:

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.”

To give you an example, a recent trade mark we filed for one of our clients contained the word “ALE” in the logo. It was approved in relation to a range of beer, ale, non-alcoholic beverages and alcoholic beverages in classes 32 and 33. However, we subsequently received a call from the Examiner informing us that he would have to revoke acceptance, as the trade mark could be considered deceptive if our client was permitted to retain items such as black beer, pilsner beer, stout, lager, porter or alcoholic beverages in its application because these were not ale. Despite filing more than 20 marks for this particular client in the last 12 months, many of which contain some type of descriptor such as ‘beer’, ‘ale’, ‘seltzer’ or ‘lager’, this is the first time such as an objection has been raised by IP Australia in relation to our client’s portfolio.

It appears that there has been significant inconsistency in the way different Examiners have handled these types of objections over the years. However, Examiners at IP Australia have now been advised to raise an objection under section 43, where the scope of protection claimed is broader than the descriptor in the trade mark.  So, for instance, if we were to apply for MACPHERSON KELLEY LAWYERS, it is likely that we would only be able to claim legal services in class 45. What about the training services we provide our clients? Or business advisory services? Or property or tax related services and advice?  It is questionable whether we could claim those services under this tightening of office practice at IP Australia.

Going back to our beer client, we have also been advised by IP Australia that they may look back at all of the pending marks for this client, including one that has been accepted and cleared the opposition period, and potentially revoke acceptance. It will interesting to see how this unfolds.

take away point

With the more conservative approach to section 43 objections adopted by IP Australia in recent times, it is important to think carefully about whether to include descriptors within a trade mark application. In the above example, it would be preferable to apply just for MACPHERSON KELLEY, in order to give the applicant the ability to cover a broader scope of goods and services, which actually reflects their product/service offering.

The Macpherson Kelley IP team can advise you on the prospects of registrability of your trade mark and offer strategies to ensure you have the appropriate protection in place. Please contact us if you require any assistance.

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Australian Trade Mark Applicants Beware: descriptors in trade marks could narrow your scope of protection

10 May 2021
belinda sigismundi

In the last couple of weeks, we have seen a dramatic change in the way IP Australia has been assessing Headstart and Standard trade mark applications. It appears that IP Australia is taking a far more conservative view in relation to objections raised pursuant to section 43 of the Trade Marks Act 1995, on the basis that the trade mark is likely to “deceive or cause confusion”. The actual wording of section 43 reads as follows:

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.”

To give you an example, a recent trade mark we filed for one of our clients contained the word “ALE” in the logo. It was approved in relation to a range of beer, ale, non-alcoholic beverages and alcoholic beverages in classes 32 and 33. However, we subsequently received a call from the Examiner informing us that he would have to revoke acceptance, as the trade mark could be considered deceptive if our client was permitted to retain items such as black beer, pilsner beer, stout, lager, porter or alcoholic beverages in its application because these were not ale. Despite filing more than 20 marks for this particular client in the last 12 months, many of which contain some type of descriptor such as ‘beer’, ‘ale’, ‘seltzer’ or ‘lager’, this is the first time such as an objection has been raised by IP Australia in relation to our client’s portfolio.

It appears that there has been significant inconsistency in the way different Examiners have handled these types of objections over the years. However, Examiners at IP Australia have now been advised to raise an objection under section 43, where the scope of protection claimed is broader than the descriptor in the trade mark.  So, for instance, if we were to apply for MACPHERSON KELLEY LAWYERS, it is likely that we would only be able to claim legal services in class 45. What about the training services we provide our clients? Or business advisory services? Or property or tax related services and advice?  It is questionable whether we could claim those services under this tightening of office practice at IP Australia.

Going back to our beer client, we have also been advised by IP Australia that they may look back at all of the pending marks for this client, including one that has been accepted and cleared the opposition period, and potentially revoke acceptance. It will interesting to see how this unfolds.

take away point

With the more conservative approach to section 43 objections adopted by IP Australia in recent times, it is important to think carefully about whether to include descriptors within a trade mark application. In the above example, it would be preferable to apply just for MACPHERSON KELLEY, in order to give the applicant the ability to cover a broader scope of goods and services, which actually reflects their product/service offering.

The Macpherson Kelley IP team can advise you on the prospects of registrability of your trade mark and offer strategies to ensure you have the appropriate protection in place. Please contact us if you require any assistance.