A recent decision before a delegate of the Registrar of Trade Marks serves as a timely reminder to potential trade mark applicants that it is a fundamental requirement that in order to achieve registration, a trade mark must be capable of distinguishing the relevant goods or services from those of other traders.
On 3 December 2008, Mars Australia Pty Ltd (“Mars”) applied for registration of the trade mark FREE BARS for a range of class 30 goods, including confectionary. The FREE BARS trade mark application was examined by IP Australia and accepted without objection. Kraft Foods Australia Pty Ltd (“Kraft”) subsequently opposed registration on the basis that FREE BARS was a phrase that was not capable of distinguishing Mars’ goods from those of other traders. The onus fell to Kraft to prove the ground of opposition upon which it relied.
Section 41(2) of the Trade Marks Act 1995 (Cth) provides that “[a]n application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons”.
In assessing whether FREE BARS was inherently adapted to distinguish Mars’ class 30 goods, Hearing Officer Thompson cited the test adopted by Kitto J in Clark Equipment Company v Registrar of Trade Marks  HCA 55:
“[T]he question whether a mark is adapted to distinguish [is to] be 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.”
In support of their opposition, Kraft argued that the expression FREE BARS was descriptive and incapable of distinguishing the applicant's goods from other traders because of the common use of the terms in confectionary trade promotions.
In turn, Mars argued that aside from its own use, there was no evidence of third party use of FREE BARS as a trade mark and that registration would not prevent other traders from using alternate words to impart the same message to Australian consumers of confectionary.
In upholding Kraft’s opposition, and refusing to register FREE BARS, Hearing Officer Thompson noted that:
Mars’ submissions had misstated the test for inherent adaptation as the test is not whether other traders have used the phrase FREE BARS as a trade mark, but rather, whether other traders will need (without improper motive) to use the trade mark for the sake only of its ordinary meaning; and
Mars had vitiated any prospect that the FREE BARS trade mark could ever be distinctive of, or distinguish, Mars’ goods by using the words FREE BARS in an ordinary sense in expressions appearing on and within the packaging, such as “to receive your free bar” and “you don’t win a free bar”.
The Hearing Officer also emphasised that mere use does not equate with distinctiveness, and the fact that there may be other legitimate ways of conveying a message will not mean that a trade mark is capable of distinguishing the goods or services for which protection is sought.
Merely using words in relation to your products does not mean that you can make those words distinctive of your products.
Trade mark applicants should try to choose distinctive trade marks that are unlikely to be required by their competitors to describe the goods or services in question and which are capable of distinguishing their goods and services from those of other traders.
For more information, please contact:
T +61 2 8233 9586
F +61 2 8233 9555
Scott Sloan | Partner
T +61 2 8233 9554
F +61 2 8233 9555
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