-- JonathanMo - 14 Sep 2015

Descriptive marks

One significant ground for seeking removal of protection from a registered mark (that is, removing it from the register) is that the mark has lost its distinctiveness and has become generic or generally accepted as a sign which describes an article, substance or service. A trade mark owner ceases to have any exclusive rights with respect to the trade mark where the registered mark 'consists of, or contains, a sign that, after the date of registration of the trade mark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article or substance' [TMA s.24]. See Re Sony Kabushiki Kaisha [1987] AIPC 90-412; Re Galaxy International Pty Ltd (1988) 13 IPR 433.

Descriptive words or devices which become so common and their primary meaning so plain that it is inconceivable that they could or should be associated solely with one trader may be removed from the register. Thus, if other traders are likely in the ordinary course of business and without any improper motive to desire to use the same or a similar mark, the mark would not be inherently distinctive. Some words that would extremely difficult to register (because they are something that other traders would need to use to describe their goods or services) include:

• STRAWBERRY for drinks
• WARM for heaters
• TOMATO for sauce
• GLOBAL for freight shipping services.

Examples under the old law of marks being refused registration because they were considered directly descriptive include:

• DAYSAFE (electro-mechanical security drawers and deposit boxes)
• CHEMICAL ABSTRACTS (database of summaries of chemistry articles)
• JUNIOR (microwave ovens)
• BREAK-UP (cleaning detergents)
• AUTOBOOTH (spray booths for painting and drying motor vehicle bodies)
• LITTLE PEOPLE (toy figurines)
• ALL THE COLOURS IN THE WORLD (knitwear and clothing)
• NATURAL 8 PLY (knitting yarn)
• HAIRFUSION (a method of fusing artificial hair to the human head)
• PIVOT (razors and razor blades)
• NEW WAVE (hair care products)
• KNOCKOUT (jeans and clothing)
• JETSYSTEM (washing machines).

A picture may be just as descriptive as a word: hence a kangaroo device is not distinctive of any Australian product, and a stethoscope wound around a lamp was refused registration for a doctor's after-hours service: see Re Application by Slaney (1985) 6 IPR 307.