We are often asked, “what is a descriptiveness objection and how can I overcome it?” in the course of providing advice and assistance with registering Australian trade marks. In this alert, Special Counsel Steven Hunwicks, Senior Associate Briar Francis and Vacation Clerk Zoe Jeffrey, outline what a “descriptiveness” objection is and how to overcome it so that your trade mark may be accepted.
What is a descriptiveness objection?
One of the key qualifying requirements for registering a trade mark is that your proposed mark must be capable of distinguishing your products (goods) or services from those of other traders.
A trade mark examiner may raise a descriptiveness objection under section 41(3) or 41(4) of the Trade Marks Act 1995 (Cth) when they consider that your proposed trade mark does not distinguish (whether inherently or to a sufficient degree) your goods or services from those of other traders in the same industry.
This often occurs when the proposed trade mark wholly consists of a sign that is used to indicate the:
- intended purpose;
- geographical origin; or
- some other characteristic of the goods and services that the trade mark represents, hence a “descriptiveness” objection.
Additionally, everyday words or phrases which have a general meaning will usually be hard to register as trade marks. For example, any farmer who grows apples should have the right to describe their apples as “crisp” or “juicy”.
Essentially, the test is whether your proposed trade mark is sufficiently capable of indicating to the public that your business, and only your business, is the origin or source of the goods and services, and the mark does not just describe the characteristics of the goods and services to which it is applied.
A descriptiveness objection will generally be raised if a trade mark loosely describes the goods and/or services being offered under the mark, or the place where they are performed, for example, “PERTH PLUMBING” for a plumbing services business based in Perth. Alternatively, a section 41 objection may be raised where the mark includes a laudatory term such as “SUPERIOR”, or a qualitative assessment of the good or service offered, for example, “FIVE STAR PLUMBERS”.
The rationale behind this requirement of distinctiveness is that one person (or business) should not have a monopoly on the use of words or phrases that are genuinely descriptive of the goods or services they offer, to the detriment of the rest of the industry.
I have received a descriptiveness objection, what do I do now?
A descriptiveness objection may be overcome in a variety of ways, including:
- amending the goods or services claimed by the trade mark application;
- adopting a logo or stylisation that adds distinctive elements to an otherwise descriptive phrase;
- providing evidence of use of the trade mark (or in some cases, evidence of intended future use) to establish actual or projected brand recognition in the Australian market;
- making legal submissions to rebut the examiner’s conclusions about the non-distinctiveness of the mark’s elements.