Filing for a trade mark is a crucial step for any business aiming to protect its brand identity and gain exclusive rights to use a particular mark. However, a comprehensive trade mark strategy before filing the application can save costs and avoid lengthy opposition proceedings.
Background:
An application to register the trade mark was filed under application number 2099988 on July 6, 2020. The application covered services in classes 35 and 44, including business management and medical advisory services. Acceptance of the trade mark was advertised on December 7, 2020, leading to an opposition notice filed by the Australian Traditional Medicine Society Ltd (ATMS) on February 3, 2021.
Opposition Grounds:
The ATMS, represented by Baxter Patent Attorneys Pty Ltd, opposed the registration on several grounds, primarily under sections 41 and 43 of the Trade Marks Act 1995 (Cth), arguing that the trade mark "" was not capable of distinguishing applicant’s services from those of other traders. The opposition highlighted that the terms "accredited" and "nutritionist" are commonly used and descriptive, thus lacking distinctiveness.
Decision:
The Hearing Officer concluded that the trade mark was indeed descriptive and lacked the inherent adaptation to distinguish applicant’s services from those of other traders. The decision emphasised that a combination of descriptive words, even with a design element, does not necessarily qualify for trade mark protection, if the mark does not sufficiently distinguish the services. As a result, the application was refused, and applicant was ordered to bear the costs of the proceedings. Baxter Patent Attorneys Pty Ltd successfully stopped a descriptive mark from being registered, protecting the interests of ATMS.
Importance of Trade Mark Strategy
A strategic approach to trade mark registration involves a number of considerations. A first is that a mark must be distinctive. Descriptive marks that merely describe the product or service's characteristics are unlikely to be registered unless they have acquired distinctiveness through extensive use.
Secondly, the mark should be considered by a Trade Mark attorney who has a thorough understanding of local trade mark law and how it might apply to the proposed mark.
If you're facing a potential trademark dispute, please contact our Trade Mark Attorneys to discuss strategy.
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