-- JonathanMo - 14 Sep 2015

Incapable of distinguishment

Incapacity to distinguish constitutes grounds for both rejection of, and opposition to, an application to register a mark. A three-step test is used by the Registrar of Trade Marks to determine whether an applicant mark is capable of distinguishment, namely:

• if the mark has been inherently adapted to distinguish
• if not inherently adapted, the use intended use of the mark
• if still not inherently adapted, whether prior use before application has created distinguishment.

Short combinations of numbers and letters which might be commonly used as serial numbers, or combinations of two letters commonly used as initials, would both face significant difficulty in achieving registration. Similarly, common acronyms (such as CD-ROM or LED) or abbreviations (such as AUTO BILLPAY) would be deemed directly descriptive and therefore refused registration: eg PDMX for Programmable Digital Multiplexers in Re Application by STC plc (1989) 15 IPR 419.

Trade marks which are geographical names, or which are primarily identified by the public as place names, are also not registrable, particularly if the applicant is seeking to use the name of the place from which similar products also come. However, an application will not be refused merely because that place name exists somewhere, if the public would not commonly identify the place with the mark. See Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511.

Words which in their ordinary meaning are common family names or surnames are also unregistrable. This includes both the original sound of the name and the English variation if different. However, if the name is uncommon in Australia or not primarily identifiable as such it may be permitted registration.