Bone to be wild: the key to trade mark distinctiveness
6 mins reading time
In the latest case handed down by the Federal Court of Australia, the decision in Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53 reveals the limits of trade mark applications that face a distinctiveness objection by the Registrar of Trade Marks.
Background
In 2020, Melbourne Bone and Joint Clinic (MBJC) applied to register as a trade mark, MELBOURNE BONE AND JOINT CLINIC, for orthopaedic clinic services.
The Australian Trade Mark Office rejected the application under section 41 of the Trade Marks Act 1995 (Cth) on the basis that it was not capable of distinguishing MBJC’s services from those of other traders who also provide orthopaedic health services. At a hearing in 2021, the Trade Marks Registrar deemed that the application lacked inherent adaption to distinguish those services because it consists of a place (Melbourne) and a description of the services of an orthopaedic specialist (bone and joint clinic). Despite the provision of evidence of use, the Registrar was not persuaded that the application was adapted to distinguish MBJC. MBJC appealed to the Federal Court, and Justice Moshinsky handed down his decision earlier this month.
What is a trade mark distinctiveness objection?
A trade mark is a unique symbol, word, or combination used to identify and distinguish your products or services from others in the market. Where the Trade Marks Office considers a trade mark application to lack inherent adaptation to distinguish the goods or services, the application must be rejected.
The core purpose of a trade mark is to ensure consumers can quickly identify and associate a specific product or service with a particular mark. If a trade mark is not distinctive, it won’t effectively serve this purpose, leading to consumer confusion. Further, where a trade mark is comprised of words that directly describe the kind, quality, purpose, value, origin, or characteristics of the goods or services, it is likely to be considered too descriptive. Additionally, general words or phrases that anyone could use to describe their products or services are also difficult to trade mark. In this instance, the MBJC application merely described the location and type of services.
Trade mark law aims to strike a balance between protecting brand owners and ensuring fair competition. A distinctiveness objection prevents one business from monopolising everyday words or phrases that others in the industry might need to use.
Overcoming or avoiding a distinctiveness objection
There are several ways in which an applicant can avoid a Section 41 objection to the registration of their trade mark.
The most obvious way is to choose a brand that does not describe the business. A striking brand can be a simple word, such as APPLE, so long as it is not used for an orchard or fruit supply business. Some of the most distinctive brands are common words used in unrelated businesses, for example, WINDOWS, AMAZON and UBER. Made-up words or portmanteaus can also be helpful brand names, like SPOTIFY or MICROSOFT.
If it’s an existing business, registration can be achieved by incorporating unique logos or stylisations to the trade mark, making it more distinguishable. For example, MBJC also holds a registration for the following stylised mark:
This stylised MBJC mark did not receive an adverse report from the Trade Marks Office, as it was considered inherently adapted to distinguish MBJC. One caution with a logo trade mark is that it limits the extent of the trade mark protection to that of the stylised or composite mark. To read more about the difficulties in pursuing trade mark infringement for a composite mark, read our recent article about the Agency trade mark dispute, where the Full Federal Court considered this issue.
Where a non-distinctive trade mark has been used for many years, an argument can be made that the mark has become distinctive thought extensive use. By providing evidence of past use of the trade mark in the Australian market, an applicant may be able to demonstrate that it now receives brand recognition. Evidence of use is another option to overcome a distinctiveness objection. In the MBJC case, despite its use since 2014, the evidence was not sufficient to convince the Registrar (in the first instance) or Justice Moshinsky (on appeal) that the application “does in fact distinguish the designated services” (paragraph 10).
Key takeaways
Understanding trade mark distinctiveness is crucial when choosing or registering a brand’s identity. It’s about ensuring that the trade mark effectively serves its purpose, distinguishing those products or services from others in the market.
Remember, while choosing a strong brand may seem challenging, it ultimately benefits businesses and consumers by fostering fair competition and clear brand identification.
We’re here to help
The Macpherson Kelley IP team can assist you with all aspects of trade mark law, including choosing a distinctive name or logo to pursue trade mark registration. If things get out of alignment, we can also assist in infringement disputes.
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Bone to be wild: the key to trade mark distinctiveness
In the latest case handed down by the Federal Court of Australia, the decision in Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53 reveals the limits of trade mark applications that face a distinctiveness objection by the Registrar of Trade Marks.
Background
In 2020, Melbourne Bone and Joint Clinic (MBJC) applied to register as a trade mark, MELBOURNE BONE AND JOINT CLINIC, for orthopaedic clinic services.
The Australian Trade Mark Office rejected the application under section 41 of the Trade Marks Act 1995 (Cth) on the basis that it was not capable of distinguishing MBJC’s services from those of other traders who also provide orthopaedic health services. At a hearing in 2021, the Trade Marks Registrar deemed that the application lacked inherent adaption to distinguish those services because it consists of a place (Melbourne) and a description of the services of an orthopaedic specialist (bone and joint clinic). Despite the provision of evidence of use, the Registrar was not persuaded that the application was adapted to distinguish MBJC. MBJC appealed to the Federal Court, and Justice Moshinsky handed down his decision earlier this month.
What is a trade mark distinctiveness objection?
A trade mark is a unique symbol, word, or combination used to identify and distinguish your products or services from others in the market. Where the Trade Marks Office considers a trade mark application to lack inherent adaptation to distinguish the goods or services, the application must be rejected.
The core purpose of a trade mark is to ensure consumers can quickly identify and associate a specific product or service with a particular mark. If a trade mark is not distinctive, it won’t effectively serve this purpose, leading to consumer confusion. Further, where a trade mark is comprised of words that directly describe the kind, quality, purpose, value, origin, or characteristics of the goods or services, it is likely to be considered too descriptive. Additionally, general words or phrases that anyone could use to describe their products or services are also difficult to trade mark. In this instance, the MBJC application merely described the location and type of services.
Trade mark law aims to strike a balance between protecting brand owners and ensuring fair competition. A distinctiveness objection prevents one business from monopolising everyday words or phrases that others in the industry might need to use.
Overcoming or avoiding a distinctiveness objection
There are several ways in which an applicant can avoid a Section 41 objection to the registration of their trade mark.
The most obvious way is to choose a brand that does not describe the business. A striking brand can be a simple word, such as APPLE, so long as it is not used for an orchard or fruit supply business. Some of the most distinctive brands are common words used in unrelated businesses, for example, WINDOWS, AMAZON and UBER. Made-up words or portmanteaus can also be helpful brand names, like SPOTIFY or MICROSOFT.
If it’s an existing business, registration can be achieved by incorporating unique logos or stylisations to the trade mark, making it more distinguishable. For example, MBJC also holds a registration for the following stylised mark:
This stylised MBJC mark did not receive an adverse report from the Trade Marks Office, as it was considered inherently adapted to distinguish MBJC. One caution with a logo trade mark is that it limits the extent of the trade mark protection to that of the stylised or composite mark. To read more about the difficulties in pursuing trade mark infringement for a composite mark, read our recent article about the Agency trade mark dispute, where the Full Federal Court considered this issue.
Where a non-distinctive trade mark has been used for many years, an argument can be made that the mark has become distinctive thought extensive use. By providing evidence of past use of the trade mark in the Australian market, an applicant may be able to demonstrate that it now receives brand recognition. Evidence of use is another option to overcome a distinctiveness objection. In the MBJC case, despite its use since 2014, the evidence was not sufficient to convince the Registrar (in the first instance) or Justice Moshinsky (on appeal) that the application “does in fact distinguish the designated services” (paragraph 10).
Key takeaways
Understanding trade mark distinctiveness is crucial when choosing or registering a brand’s identity. It’s about ensuring that the trade mark effectively serves its purpose, distinguishing those products or services from others in the market.
Remember, while choosing a strong brand may seem challenging, it ultimately benefits businesses and consumers by fostering fair competition and clear brand identification.
We’re here to help
The Macpherson Kelley IP team can assist you with all aspects of trade mark law, including choosing a distinctive name or logo to pursue trade mark registration. If things get out of alignment, we can also assist in infringement disputes.