The Gatherer - Volume 9

“ Finally, it is important to keep in mind that trade mark registration works on the basis of “use it or lose it”. ”

TIPS FOR CHOOSING AND USING YOUR TRADE MARK

still likely have difficulty preventing other law firms from using this phrase as a legitimate search engine term, in the face of a contention that the phrase was simply being used as descriptive search term. In contrast, a defence would be more difficult to maintain if a competitor was instead using the term “WRAYS IP” to direct consumers to its intellectual property law website. Finally, it is important to keep in mind that trade mark registration works on the basis of “use it or lose it” . Accordingly, you must continue to use your trade mark for the goods and services claimed, and in the manner that your mark appears in your registration, in order to prevent your registration becoming vulnerable to a non-use cancellation action. Businesses looking to refresh or update their branding should seek advice to ensure that their current trade mark registrations adequately protect any new branding. In addition, trade mark clearance searching is recommended prior to launching a new brand to ensure that your trade mark really is an awesome mark that is available for both use and registration.

Whilst tempting to choose a trade mark which will describe the virtues of your product to your consumers, it is important to remember that a purely descriptive trade mark will have challenges in both registrability and enforcement. Whilst a trade mark that indirectly alludes to the qualities of your product may be acceptable, direct descriptors are not. The Australian Trade Marks Examiner’s Manual provides examples of the types of trade marks that will be considered inherently capable of distinguishing and are therefore acceptable without evidence of use. These marks include: –– superseded geographic names with no connection to the goods or services claimed –– coined words or unlikely grammatical constructions –– expressions not in common use in respect of the goods or services – eg, APPLE for computer products (as opposed to fruit) –– slogans with only indirect reference – eg, COLOUR ME BEAUTIFUL for cosmetics, or PARDON OUR SCAFFAOLDING for metal scaffolding. –– surnames, personal names or company names that are not commonplace

Trade marks which are considered to have no inherent adaptation to distinguish include geographical names (where the goods or services in question could come from more than one trader in that location) or highly laudatory words such as BEAUTIFUL or PERFECTION or AWESOME. In these circumstances, significant evidence of use to show that the mark has, in fact, come to distinguish and signify a trade mark applicant’s particular goods or services will need to be adduced in order to achieve registration. However, it should be borne in mind that, even if ultimately able to be registered, the more descriptive a trade mark, the more difficult it will be to enforce. The more descriptive words in a trade mark, the narrower the breadth of protection will be. As stated by the Court in the Hornsby Building case (concerning the names “HORNSBY BUILDING INFORMATION CENTRE” vs “SYDNEY BUILDING INFORMATION CENTRE”, “a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action”. The issue of enforcement is of particular significance in today’s online environment. For example, the owner of a registered trade mark for “THE BEST AUSTRALIAN IP FIRM” would

A brief perusal of the Australian trade marks register reveals the following similarly comprised prior trade mark applications for food and beverage products, all of which received adverse examination reports and lapsed: –– WORLD’S MOST AWESOME WINE for wines and other alcoholic beverages –– SIMPLY AWESOME MILK for milk and milk products –– AWESOME CHICKEN for food products made from meat –– AWESOME WATER for drinking water Not so awesome! However, the following “awesome” trade marks have been found to be registrable by the Australian trade marks office: –– BREWING AWESOMENESS for beers –– AWESOME PAWSOME for pet food –– STRAWSOME MILK BAR! for non- alcoholic beverages and snack bar services –– MENTAL AWESOMENESS for beers and soft drinks The above demonstrates that descriptive or laudatory marks can still be referenced or incorporated into a trade mark under certain circumstances, in order to form a uniquely comprised and, therefore, distinctive trade mark.

However, I suspect that Mr Bradley will have difficulty progressing both of his applications, as apart from the obstacle to AWESOME WATER presented by Aussie Water’s prior registration, AWESOME COOLERS is likely to face a distinctiveness objection on the basis that it has no inherent capacity to function as a trade mark for the goods claimed – namely, water coolers. As above, the purpose of a trade mark is as a signifier of origin, so marks which do not clearly indicate a particular trader, or which comprise words which others in the trade might wish to use to legitimately describe their own products (ie, awesome water coolers), are not registrable without significant evidence of prior use. Indeed, the Register reveals 2 previous attempts by traders to register the mark AWESOME COOLERS in connection with water coolers without success, including a prior 2014 application by Aussie Water. Fortunately for Aussie Water, it seems that its application for AWESOME WATER was able to get across the line (and has now been maintained) because the claim was for water coolers rather than water itself, although I query whether the Australian Trade Marks Office would be so generous under current examination practice.

MARIE WONG Principal

1 Paramount International Export, Ltd. v Campbell Woskett as Trustee for the Agvesta Trust. [2020] ATMO 25 (19 February 2020) 2 (1978) 140 CLR 216 (19 April 1978) 3 Aussie Water Coolers Pty Ltd v Lee Bradley [2020] ATMO 23 (18 February 2020)

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