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Section 41 Distinctiveness Objections in Trade Marks – Unusual, Archaic and Clunky Phrases

An objection raised by IP Australia under section 41 of the Trade Marks Act 1995 refers to an issue with the applied trade mark being capable of distinguishing the goods and services from the goods and services of others. 

An example of when a section 41 objection may be raised is if an applicant sought protection for the hypothetical trade mark Apple in relation to apples.  Because trade marks are negative rights, if such a trade mark were registered, the owner would be able to prevent others (including apple farmers) from using the term Apple to describe their goods.  This means that other people (apple farmers) who would have a legitimate need to describe their products with the word Apple, would be precluded from doing so.  

As a result, the Trade Marks Act prevents the registration of trade marks that are descriptive of the goods and services for which protection is sought.  Importantly, the operation of this section is relevant where the goods and services for which protection are sought are described by the trade mark.  This is why we may have the registration of Apple in relation to phones, computers, and other electronics.

If you have received a s41 objection, the Trade Marks Office should have undertaken a two-part assessment process. 

Apple Logo
  • First, they should have arrived at an ordinary signification of the trade mark in the light of the applied for goods and/or services.
  • Secondly, they should have determined that there is a likelihood that other traders might legitimately wish to use the trade mark for that ordinary signification in connection with their similar goods or services.
We will focus on the second part of this test here, that is, the legitimate desire for other traders to use the trade mark. We have reviewed the recent Trade Marks Office decisions and have noticed that linguistically odd phrases that include descriptive components may be found registrable as it is unlikely that other traders would desire to use the trade mark.  

For example, in KJ Ince Pty Ltd [2023] ATMO 139 it was held that FLOWERS FOR ALL was not descriptive of flowers and floristry services. 

In this decision, the Hearing Officer considered at length the use of “for all” to refer to “all people” or “all persons”. 

In particular, the Hearing Officer considered “for all” to be unusual and further, that in this day and age, the use of “for all” could possibly even be considered archaic.  In their reasoning, the Hearing Officer referred to other uses of the term “for all” such as in the Pledge of Allegiance and in The Three Musketeers book.

The Three Musketeers

It would be unusual, in common parlance in Australia today, for people to use the term ‘for all’ to refer to all people. It is far more likely that the expression ‘for everybody’ or ‘for everyone’ would be used. If a person today were, in everyday conversation, to use the term ‘flowers for all’—especially without the additional ‘people’ or ‘persons’—it likely to strike the listener as odd, or be taken as an intentional attempt to use this (potentially) archaic terminology for effect.

While this decision pertained to a revocation action, it involved a fresh consideration of section 41. 

Similarly, in Green Canpump Inc. [2023] ATMO 135, CANPUMP was found not to be descriptive of pumps and pumping related machinery. 

In this decision, the Hearing Officer considered the ordinary signification of CANPUMP and commented that the trade mark may indicate “able to pump”.  With this in mind, the trade mark was considered an oddity, effectively saying to potential purchasers: “here is a pump that is able to pump stuff”. Accordingly, the irregularity rendered the trade mark distinctive. 

These decisions provide an indication that uncommon, archaic, clunky, or odd linguistic phrases may be distinctive, even where there may be descriptive components of the trade mark.  

Give the team at Kings IP a call today to discuss your trade mark.  We can assist you with trade mark matters at all stages.

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