Australian Trademark Applicants Beware: Descriptors in Trademarks Could Reduce Your Scope of Protection – Macpherson Kelley

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Over the past two weeks, we have seen a dramatic change in the way IP Australia assesses Headstart and Standard trademark applications. It appears that IP Australia takes a much more conservative stance on objections raised under section 43 of the Trade Marks Act 1995, on the grounds that the mark is likely to “mislead or cause confusion”. The actual wording of section 43 reads as follows:

An application for registration of a mark for specific goods or services must be rejected if, because of a connotation that the mark or a sign contained in the mark has, the use of the mark in relation to these goods or services would be likely to mislead or cause confusion.”

To give you an example, a recent trademark we filed for one of our clients contained the word “ALE” in the logo. It has been approved for a range of beers, ales, soft drinks and alcoholic beverages in classes 32 and 33. However, we subsequently received a call from the reviewer advising us that they should revoke acceptance, as the mark could be considered misleading if our client was allowed to keep items such as stout, pilsner, stout, lager, porter or liquor in his application because he it wasn’t about beer. Despite depositing over 20 points for this particular customer in the past 12 months, many of which contain some type of descriptor such as “beer”, “ale”, “seltzer” or “lager”, this is the first time an objection has been raised by IP Australia regarding our client’s portfolio.

There appear to have been significant inconsistencies in how different reviewers have handled these types of objections over the years. However, IP Australia examiners have now been asked to raise a Section 43 objection, where the claimed scope of protection is wider than the mark descriptor. So, for example, if we were to apply for MACPHERSON KELLEY LAWYERS, chances are we could only claim legal services in class 45. What about the training services we provide to our clients? Or business consulting services? Or real estate or tax services and advice? It is doubtful that we can claim these services under this tightening of office practices at IP Australia.

Going back to our beer client, we have also been advised by IP Australia that they may review any pending marks for this client, including one that has been accepted and passed the opposition period, and potentially revoke the acceptance. It will be interesting to see how this plays out.

takeaway point

With the more conservative approach to Section 43 objections taken by IP Australia of late, it is important to carefully consider whether to include descriptors in a trademark application. In the example above, it would be best to apply for MACPHERSON KELLEY only, to give the applicant the opportunity to cover a wider range of goods and services, which truly reflects their product/service offering.

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