This article discusses the recent IP Australia Hearings Office decision involving Societe Air France. The focus in this case was whether the trade mark set out below was sufficiently distinctive to be registered, due to either its inherent distinctiveness, or distinctiveness acquired through use in trade.

An examiner of IP Australia deemed that the trade mark was not sufficiently distinctive to be registered, either on the basis of inherent registrability or acquired distinctiveness. Societe Air France requested a hearing to determine the matter.

Societe Air France argued that the trade mark was inherently distinctive, as it was not a simple geometric shape, but rather was a complex shape featuring several characteristics, including a graduation of colour in the trade mark.

The Hearing Officer held that the trade mark was severely lacking in inherent distinctiveness. The trade mark was deemed to be merely a curved stripe, which is an ordinary kind of flourish used to highlight other trade marks such as distinctive words.

The Hearing Officer also considered the evidence of use provided by Societe Air France. The evidence was deemed to demonstrate that the trade mark was used as a decorative flourish to highlight the term AIR FRANCE, but did not demonstrate that that trade mark in question was understood as a trade mark in its own right. It was also noted that the evidence did not feature prominent use of the graduating colour of the trade mark.

The Hearings Officer refused to register the mark, finding that it was not sufficiently inherently distinctive to be registered, and that the evidence of use did not demonstrate that the trade mark had acquired a distinctive character.

The decision is indicative of the difficulty in registering plain or un-stylised device elements as trade marks, and is a reminder that if a trader intends to use and register a device element as a trade mark, the use of the trade mark should clearly be “trade mark use”, rather than decorative use.