Choosing a Distinctive Trade Mark in Australia: Why It Matters and How to Get It Right
By Giulia Didonè | Trade Mark Attorney
When launching a business and creating a brand in Australia, registering your trade mark is one of the smartest legal steps you can take. However, not every name or logo is eligible for protection. To be registered, a trade mark must be distinctive – something unique, imaginative, and capable of setting your goods or services apart from others in the market.
But what does “distinctive” really mean, and why is it so important?
What makes a Trade Mark Distinctive?
Under theTrade Marks Act 1995, a trade mark must be capable of distinguishing your goods or services from those of others. [1] This means it should not merely describe what you offer and it should function as a badge of origin, meaning that it should clearly distinguish your goods or services from those of other traders.
Invented or coined terms, unexpected uses of familiar words (like “Apple” for computers), distinctive combinations of letters, words, or visual elements that do not directly describe your goods or services or indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services [2] are generally the strongest in meeting the distinctiveness requirement under the Act.
Marks That Are Unlikely to Be Distinctive
Descriptive terms like “Premium Clothing” for apparel, “SpineAlign” for a chiropractic clinic, “True Legal” for a law firm, or “Skin Ritual” for a cosmetic product are examples of marks that generally do not meet the distinctiveness requirement, because they simply describe what you do/offer rather than who you are. Anyone else offering the same kind of products or services should be free to use to describe themselves or their product or service in the ordinary course of trade.
The provision of the Act and the Courts do not want that one trader gets a monopoly in relation to a word or phrase (or logo) that, in the ordinary course of business and without improper motive, other traders might have a legitimate reason to use. [3] So, do not be surprised if IP Australia raise an objection under section 41 if the trade mark you are trying to register falls into this category.
The Distinctiveness Test in Australia
The first question IP Australia to be determined in deciding whether a trade mark is capable of distinguishing the applicant’s goods and/or services is: to what extent is the applicant’s trade mark inherently adapted to distinguish their goods or services? This determination involves a two-part process:
- Firstly, determining the ordinary signification of the trade mark in the light of the applied for goods and/or services; and
- Secondly, determining the likelihood that other traders might legitimately wish to use the trade mark for that ordinary signification in connection with their similar goods or services. [4]
All trade marks examined will fall into one of three categories:
- Trade marks that are sufficiently inherently adapted to distinguish and are therefore prima facie capable of distinguishing;
- Trade marks that have some limited inherent adaptation to distinguish but are not prima facie capable of distinguishing;
- Trade marks that, prima facie, have no inherent adaptation to distinguish.
If the trade mark applied for fall in the second or third category, then it can face an objection from IP Australia based on section 41(4) or 41(3) of the trade Marks Act 1995.
Better Alternative
Take our own example: names like “Intellectual Property Law Firm” or “The IP Legal Team” clearly describe the services offered: you immediately understand what services are being offered. In contrast, a name like “XVII Degrees” does not directly convey what we do. However, over time, it can become strongly linked to our brand in the minds of clients, and that is exactly what a good trade mark aims to achieve.
So, we can say that trade mark applications often face an objection by IP Australia when the name:
- Relies on terms commonly used within the industry (e.g., “PropertyLink” for a real estate agency)
- Describes a benefit or effect of the product (like “Energy Burst” for snack bars)
- Uses promotional or exaggerated language (for instance, “Supreme Veggies” for food products)
- Points to a geographic origin connected to the goods or services (such as “Swiss Peaks” for chocolate)
- Simply states the nature of the product or service (e.g., “Fresh Skincare” for beauty products)
Tricks That Don’t Always Help
Words that are merely phonetic variations, straightforward combinations, deliberate misspellings, or slight alterations of descriptive terms are generally not considered inherently capable of distinguishing a trade mark and so the trade mark still face the risk of being refused. However, unlikely grammatical constructions of words which would otherwise attract grounds for rejection, including inversions, play on words and portmanteau words (two words telescoped together), may be inherently adapted to distinguish. [5]
Switching languages doesn’t guarantee success as well. If a trade mark in another language simply translates to a descriptive term, it will likely face the same hurdle. An example of this can be found in Maxam Food Products Pty Ltd, Re [1991] ATMO 12, where the words “La Deliziosa”, Italian for “the delicious one”, were refused on the basis that their meaning would be transparent to the general public, and recognised as a laudatory expression in relation to foodstuff goods by large numbers of ordinary Australians. [6]
Exceptions: Acquired Distinctiveness
There is an exception. A mark may become distinctive through the use made of it, as a trade mark. A trade mark that lacks of inherent capacity to distinguish may still become distinctive in fact as a result of the use made of it on the designated goods or services, avoiding a refusal under section 41(3). Likewise, a mark may have insufficient inherent adaptation to distinguish under section 41(4)(a) but through a combination of the factors under section 41(4)(b) avoid the refusal under section 41(4).
Therefore, if a trade mark has acquired a level of distinctiveness through use (and taking into account any other relevant circumstances), it may be found to be capable of distinguishing, thereby rendering sections 41(3) and 41(4) inapplicable.
Final Thought: A Good Trade Mark Is a Good Business Investment
A strong, distinctive trade mark is not only a valuable asset but also a powerful marketing tool. It helps customers discover your business, build trust, and keep coming back. Think of it as the front door to your brand. So take the time to choose a name that is unique, memorable, unexpected, and most importantly legally protectable.
In the Australian market, this is your best chance to build a strong, defensible trade mark with long-term value.
If registering a trade mark is of interest to you, reach out to us at XVII Degrees. We can help you to navigate the legal obstacles and work towards securing your trade mark registration.
Featured Image by Brands&People on Unsplash.
References:
[1] Trade Marks Act 1995 (Cth), section 41. Retrieved from https://www.legislation.gov.au/C2004A04969/latest
[2] Trade Marks Act 1995 (Cth), section 41, Note 1. Retrieved from https://www.legislation.gov.au/C2004A04969/latest
[3] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511
[4] IP Australia Trade Marks Manual of Practice and Procedure, under part 22.3; Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537 at 555
[5] IP Australia Trade Marks Manual of Practice and Procedure, under part 22.10
[6] Maxam Food Products Pty Ltd, Re [1991] ATMO 12
