- The test every trade mark application must pass
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Worked examples: what gets registered and what gets rejected
- A made-up word that means nothing yet
- A foreign word most Australians will not understand
- A name that hints without describing
- A plain description of what you sell
- A slogan that sells the benefit
- A logo that tries to rescue a weak name
- A bottle shape customers recognise by silhouette
- A single colour
- A jingle customers hum
- A scent
- What the examples have in common
- When a trade mark lawyer earns their fee
- The question to ask about any brand element
The test every trade mark application must pass
You are about to launch a brand, and you want to stop competitors copying your name, your logo, your slogan or the way your product looks. Whether any of those things can be registered as a trade mark in Australia comes down to one question: can the sign distinguish your goods or services from everyone else's?
The Trade Marks Act 1995 (Cth) defines a trade mark as a sign used or intended to be used to distinguish your goods or services from those of other people (s 17), and defines "sign" very broadly (s 6): any letter, word, name, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or a combination. Under s 41, IP Australia must reject an application if the trade mark is not capable of distinguishing the goods or services you nominate, and a mark is taken to be incapable only when it is not inherently adapted to distinguish and has not been used enough to have become distinctive in fact. The High Court explained in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 that a sign is inherently adapted to distinguish when its ordinary signification in Australia does not give other traders a legitimate need to use it to describe their own goods (Cantarella). The rule is easier to see in action than in the abstract, so here are ten worked examples.
Worked examples: what gets registered and what gets rejected
A made-up word that means nothing yet
You invent the word "Zorvil" for a new line of bike lights. Nothing about the word describes bike lights, hints at their quality or is needed by any other trader, so it is inherently adapted to distinguish. Invented words are the strongest marks you can file: Kodak and Vegemite began as made-up words. An application for "Zorvil" should pass examination with little trouble, and the registration protects the word itself in whatever way you present it.
A foreign word most Australians will not understand
Cantarella Bros registered the Italian words ORO and CINQUE STELLE, which mean "gold" and "five stars", for its coffee. Modena Trading asked the High Court to cancel the registrations. The High Court restored them: because the words carried no ordinary descriptive meaning for Australian consumers, other coffee traders had no legitimate need to use them, so they were inherently adapted to distinguish. The lesson cuts both ways. A foreign word that Australians do understand, such as a common menu term for food, will be treated like an English description.
A name that hints without describing
"PeakFuel" for a sports nutrition brand suggests energy and performance but does not describe the goods or their ingredients. Marks like this sit in the middle of the spectrum: they are registrable in principle, but examiners will test whether the hint crosses into description, and other traders may genuinely want the words. A suggestive name often needs a distinctive logo, careful class selection or evidence of use to be safe.
A plain description of what you sell
"Sydney Plumbing Services" for a plumbing business describes the kind of service, its location and who provides it. Section 41 names exactly this category: signs ordinarily used to indicate the kind, quality, quantity, intended purpose, value or geographical origin of goods or services are the ones that fail. The application will be rejected unless the mark has been used so extensively that customers already associate it with you, which a new business cannot usually show. Geographic names fail for the same reason: other traders in that place need them.
A slogan that sells the benefit
"Fast, affordable plumbing" promises a benefit, and like a descriptive name it will be rejected, because every competitor could fairly use the same words. A slogan that is brand-led rather than benefit-led can be registered. A café slogan such as "Mornings worth waking for" is evocative rather than descriptive, and if it is consistently tied to the brand it can distinguish the café's services.
A logo that tries to rescue a weak name
A distinctive logo can be registered on its own even when the name it accompanies is descriptive, but the registration protects the logo as a whole, not the words inside it. It will not stop a competitor using the descriptive words in plain text. If your name is borderline, the practical move is to file the word mark and the logo mark as separate applications, and to remember that a generic device such as a plain circle or star adds little: common shapes are hard to monopolise.
A bottle shape customers recognise by silhouette
The Coca-Cola contour bottle has been a registered shape mark in Australia for decades, and the company has enforced it in the Federal Court (Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 (WIPO Lex)). Shape marks are difficult because purely functional shapes, such as a standard bottle neck, cannot distinguish your goods and other traders need them. Even a registered shape does not guarantee success: Coca-Cola's later infringement claim against PepsiCo's new bottle shape failed in 2014 (Coca-Cola Co v PepsiCo Inc [2014] FCA 1287). A shape will only win if it is genuinely distinctive of your brand and the rival shape is deceptively similar.
A single colour
Colours are registrable in principle but are among the hardest marks to own, because a single colour rarely distinguishes on its own and other traders may need it. The Louboutin red sole has been registered in Australia, but the protection is limited to the red sole on high-heeled shoes; it does not stop anyone using red elsewhere on footwear. Cadbury's attempt to stop Darrell Lea using purple on chocolate packaging ran through the Federal Court for years and ultimately ended with judgment for Darrell Lea (Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2008] FCA 1115). The lesson: if colour matters to your brand, register the specific colour applied in a specific way to specific goods, and build evidence of use.
A jingle customers hum
Sounds are expressly registrable: "sound" appears in the definition of sign, and IP Australia lists sounds among the kinds of trade marks it accepts (kinds of trade marks). The catch is that a sound mark must be represented graphically, for example as musical notation, and must distinguish your services rather than merely decorate them. A short jingle consistently used at the start of your advertising can qualify, but most small businesses will get more value from their word mark than from a sound mark.
A scent
Scent is also in the statutory definition of sign, so a scent mark is possible in theory. In practice almost none are registered, because the applicant must show that consumers identify the scent with one trader, and because representing a scent in an application is genuinely difficult. This is the rarest category, and unless a scent is central to your product you should not build your brand strategy around it.
What the examples have in common
Every example turns on the same question the High Court asked in Cantarella: would another trader legitimately need this sign to describe their own goods or services in the ordinary course of trade? If the answer is no, the sign is inherently adapted to distinguish and can be registered. If the answer is yes, because the sign is descriptive, generic, geographic or functional, the mark fails unless years of use have made it distinctive in fact. The examples line up along a spectrum: signs no other trader needs sit at one end and register easily; signs every trader needs sit at the other and fail; in the middle sit marks that are registrable only with the right presentation and evidence.
Applied to your own brand, the lessons are:
- Run the need test before you fall in love with a name: if a competitor would fairly want the words to describe their own offer, your brand has a problem.
- Invented beats suggestive, suggestive beats descriptive: the more the sign says about your product, the harder registration becomes.
- A logo does not rescue a descriptive name: it protects the logo, not the words, so file the word mark separately.
- Use can rescue a weak mark, but only with evidence: under s 41, use to the extent that the mark does in fact distinguish usually means years of documented trading, not a launch campaign.
- Check for conflicts before you file: under s 44, an application is rejected if the mark is substantially identical or deceptively similar to an earlier mark for similar goods or services, and a spelling tweak does not avoid a clash if the names sound alike.
When a trade mark lawyer earns their fee
Choosing a mark and filing it yourself is cheap, but the failures are expensive. A lawyer will run a clearance search of the register and the market, give an opinion on whether your mark is inherently adapted to distinguish and whether earlier marks in your classes are deceptively similar, and advise which classes to cover now and later. For a borderline mark, a lawyer can assess whether you have the evidence of use that s 41 requires, or whether a revised presentation of the mark would fix the problem. After filing, a lawyer responds to examiners' reports and, if your application is accepted and published, watches the two-month opposition window during which anyone can oppose it (opposition). The same skills matter when you later need to enforce the mark against a copycat. Each of these steps is where self-filers get tripped: wrong classes, an overlooked similar mark, or a descriptive mark filed with no evidence behind it. That is also where the cost of getting it wrong shows up. A rebrand forced by a failed application, or by a competitor's opposition succeeding, costs far more than the clearance advice that would have avoided it.
The question to ask about any brand element
Before you commit to a name, a slogan, a logo or a packaging look, ask the Cantarella question in its sharpest form: if a competitor wanted to describe their own goods fairly and honestly, would they need to use this sign? If they would, the sign will not be registered for you, or will be registered only after years of proven use. If they would not, you have a brand element that can be protected. That single question explains every example above, from invented words at one end to scents and colours at the other.
The practical route from there is straightforward. You file an application with IP Australia, which examines it against the distinctiveness and conflict grounds, accepts it, publishes it, and registers it after the opposition period closes. Registration lasts ten years and is renewable (renewal), applications start at around $250 and take at least seven months (timeframes and fees), and the registration gives you the right to stop others using a substantially identical or deceptively similar sign for similar goods or services.
Remember that a business name registered with ASIC, or a domain name, gives you no trade mark rights at all: only registration with IP Australia does. Distinctiveness decides what you can register; the search, the classes and the evidence decide whether it survives.