s 41 – not distinguishing

Section 41 of the Trade Marks Act 1995 (Cth) provides that an application for registration of a mark “must be rejected if the trade mark is not capable of distinguishing” the relevant goods or services.  Whether a mark is capable of distinguishing is determined first by assessing the extent to which is it “inherently adapted” to do so.

The test for inherent adaptation:

In  Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (Clark Equipment), Kitto J explained that whether a trade mark is “inherently adapted to distinguish” is tested by reference to:

“…the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.” (at 514).

In Cantarella Bros Pty Limited v Modena Trading Pty Limited (2014) 315 ALR 4, the majority of the High Court said:

“the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.” (Citations omitted).

This appears to suggest a new two-part test for inherent adaptation – at least for word marks.   The “ordinary signification” of the words must be considered first.  Then, if the words have an ordinary meaning to the target audience which is “directly descriptive” of the relevant goods or services, or falls within one of the other categories identified by the Court, consideration turns to the issue of whether other traders might legitimately need to use those words.

Recent authority, however, suggests the rule is unchanged.  In Verrocchi v Discount Chemist Outlet Pty Ltd [2015] FCA 234, Middleton J said (at [103]:

“The proper test for assessing the inherent capacity of the registered trade mark to distinguish the designated services for the purposes of s 41(3) still remains that articulated by Kitto J in Clark Equipment…” and the High Court in Cantarella “recently endorsed this test“.

For examples of marks found to be without any inherent adaptation to distinguish, see here.  These marks are registrable only if they are distinctive in fact at the time of filing.

For examples of marks found to have at least some inherent adaptation to distinguish, see here.  The registrability of these marks will depend on the degree of inherent adaptation, the nature of use or intended use and “any other circumstances.”

It is important to note that the same mark might be inherently adapted to distinguish one type of goods or services but not inherently adapted to distinguish another.

 Change to the wording of s 41

With effect from 15 April 2013, the the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the TMA as it then stood and substituted new wording.  Trade mark applications made before 15 April 2013 continue to be considered under the old provision.

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