The Gatherer - Volume 9

W hen name for your new product, it’s tempting to opt for a name which tells consumers exactly what your product is or does, where it is from, or how “awesome” it is! However, 2 recent Australian Trade Mark Office cases serve as timely reminders about the downfalls of choosing highly descriptive or laudatory words for your brand. choosing a brand

CHOOSING AN “AWESOME” TRADE MARK FOR YOUR PRODUCT

Importantly, Paramount does not own a trade mark registration for the plain word mark “FIJI” and it seems that a number of applications attempting to do so over the years have failed, with the applications ultimately lapsing. An individual, Campbell Woskett ( Woskett ), sought to register the mark “ FIJI FRESH ” in connection with a range of goods including cleaning products, foods and beverage products. This trade mark application was opposed by Paramount. It was Woskett’s claim for “mineral and aerated waters” which initially agitated Paramount and, during the course of the opposition proceedings, Woskett amended his beverage claims to exclude mineral and aerated waters. The remaining beverage claims included: non- alcoholic beverages (excluding mineral and aerated waters) and other non-alcoholic beverages; fruit beverages and fruit juices; coconut juice (beverages); coconut water (beverages); intoxicating beverages, being beverages made from the roots of the kava shrub. Paramount’s opposition was based on its prior registrations for marks incorporating the word “FIJI” for drinking water ( Fiji Registratons ), as well as its reputation in the “FIJI” marks for bottled water in Australia.

A good trade mark can be an important and powerful tool to

distinguish your products and develop brand equity and loyalty. Yet, in order to function as a trade mark, a mark must be capable of distinguishing the goods of one trader from another, and not be a mark or phrase which other traders might want to legitimately use notoriously difficult to protect as trade marks include signs which indicate the kind, quality, intended purpose or geographical origin of a product or service, as well as common surnames and laudatory marks. In addition, trade marks which incorporate such signs can be more difficult to enforce, as demonstrated by the first case below. FIJI vs FIJI FRESH 1 Paramount International Export Ltd ( Paramount ) uses the name “FIJI” to promote and sell bottled water sourced from an artesian aquifer on an island of Fiji. Paramount is the owner of a number of Australian trade mark registrations which include the name “FIJI” for drinking water, including the following marks: to describe their own products. Examples of marks which are

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