How to overcome a lack of distinctiveness trademark objection
Have you have received a lack of distinctiveness trademark objection from IP Australia?
This will occur if your trademark is not capable of distinguishing the nominated goods or services from another trader’s similar goods or services.
After receiving this sort of objection your trademark will only be accepted if you can supply information or evidence that demonstrates the objection should be withdrawn, or if the trademark examiner finds information to satisfy the Registrar that your trademark is sufficiently distinctive when applied to the nominated goods or services such that it would be appropriate to withdraw the objection
Under section 41 of the Trade Marks Act, a distinctiveness objection can be raised against trade marks that:
- Have some inherent capacity to distinguish but are not prima facie capable of distinguishing the goods or services under s41(4) of the Trade Marks Act 1995; and
- Trade marks that do not have any inherent adaptation to distinguish under s41(3) of the Trade Marks Act 1995.
Basically, the examiners will look at your trademark and ask if it is likely other traders will legitimately need or desire to use the same or very similar trademark in respect of similar goods/services. If the answer is ‘yes’, it is likely, then a section 41 objection is likely to be issued.
The documents you receive from IP Australia about your lack of distinctiveness trademark objection will tell you which of the above two sections of the Act have been raised. Taking note of the section is important because the Registrar will assess the evidence of use to overcome your objection differently.
If you use a potentially descriptive name for your business or your goods/services that would likely attract a section 41 objection but you also use a distinctive logo mark to promote your goods/services, consider filing for your logo mark. Whilst this will not provide independent protection or registration of the words alone, a distinctive logo will – in most cases – avoid a section 41 objection.
What evidence do you need to provide to overcome a lack of distinctiveness trademark objection?
If you have received a section 41(4) objection from IP Australia, the strength of the objection may determine the amount of evidence you need to provide to the Registrar. This section allows you to provide evidence of actual use of your trademark but also evidence of your intention to use the trademark. This evidence is needed so as to prove that your trademark is, or will become, capable of distinguishing your goods or services from the similar activities of other traders. In some cases, informal information/evidence along with submissions may be enough to overcome this objection.
A spectrum is used when assessing your trademark’s capacity to distinguish the relevant goods or services. At one end of this spectrum are trademarks that are considered inherently capable of distinguishing. These trademarks will generally pass through examination without having section 41 objections raised against them. On the other end of the spectrum are the trademarks, which have no capacity to distinguish. A trademark that has no capacity to distinguish will encounter section 41(3) objections. In the middle of the spectrum are trademarks that have some capacity to distinguish the goods or services but further information or evidence is needed to get them across the line
The amount of evidence you will need to provide may depend where your trademark’s capacity to distinguish the goods or services falls on this range. Quick Off the Mark® can help you.
Is it easy to successfully overcome the distinctiveness trademark objection?
While it is not possible to predict the outcome of a lack of distinctiveness trademark objection case, Quick Off the Mark® suggests that your success may depend on:
Whether the objection is presented under s41(3) or s41(4) of the Act – generally s41(4) objections are easier to overcome
How long you have used your trademark in respect of the relevant goods and/or services;
The extent to which you have promoted your trademark in the marketplace for those goods/services;
Being able to provide the evidence that contains the information the examiner will need to make a decision
How strong the distinctiveness objection raised against your trade mark is;
Evidence of use supplied under s41 (3) of Trade Marks Act 1995
Have you received an objection raised against your trademark that is under section 41 (3) of the Trade Marks Act 1995? If you have, it means the examiner has found your trademark is not in any way capable of being able to distinguish the relevant goods or services.
The process to successfully overcome this section is particularly hard and in some cases simply will not be possible. Some trademarks, no matter the level of use simply will not be registrable – for example:
In British Sugar PLC v James Robertson & Sons Ltd  RPC 281 (‘Treat’) at 302 Jacobs J commented:
There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap, the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark.
You will need to show through your evidence on the day you lodged your trademark application, the trademark factually distinguished goods or services in the marketplace; that the trademark is not simply the common description for a product, such as the above ‘soap’ example. Unlike the section 41(4) objection you will not have the opportunity to show evidence of intended use that demonstrates the trademark may one day be capable of distinguishing.
For this to be proved, you will need to have evidence that demonstrates you have been using the trademark extensively before your application. To show that consumers recognise your trademark as a badge of origin, and did at the date of your application, you will likely need to provide evidence over a number of years. Length of time is only one factor considered in these objections. The extent of use – in terms of wide spread promotion, advertising campaigns and the like will be important. Including third party declarations from relevant persons, or consumers that help show the examiner that the trademark did, at the time of filing, in fact distinguish your goods or services in the marketplace may be useful.
Examples of marks attracting this particular lack of distinctiveness objection are those that are word marks combining a place + service description. For example Melbourne Hairdressers for hairdressing services.
Overcoming distinctiveness trademark objections – requesting a hearing
While most trademark distinctiveness objections are dealt with at the trademark office level, it is possible for a trademark applicant to request a hearing. This can happen if the trademark applicant feels that the refusal was unjustified, or if the usual process of corresponding with the examiner or filing evidence does not achieve approval. In some instances, the hearing officer will maintain the objection in other cases they may overturn it.
This recent case concerns a mark of simply using the word FOX. This invoked a section 41 objection, primarily because Fox is a common surname. The Trade Marks Act and Manual provide that common surnames (e.g. that appear 750 times or more on the electoral role) are not capable of distinguishing because other traders should be allowed to use the common surname.
In this case, the applicant tried to respond to the report several times and then requested a hearing. They were ultimately successful (noting they did have to make some amendments to the description of their goods) in gaining registration.
Have you received a lack of distinctiveness trademark objection from IP Australia?
If you are not sure what evidence to provide or how to proceed, Quick Off the Mark® can help you.
The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.
Quick Off the Mark is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.