To help! My trademark application received a description objection!

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We are often asked, “What is an objection to description and how can I overcome it?” in connection with the provision of advice and assistance in the registration of Australian trade marks. In this alert, Special Counsel Steven Hunwicks, Senior Partner Briar Francis and Vacation Clerk Zoe Jeffrey outline what a “descriptivity” objection is and some options for overcoming it so your trademark application can be accepted.

What is a descriptiveness objection?

One of the main qualifying requirements for trademark registration is that your proposed mark must be able to distinguish your products (goods) or services from those of other merchants.

A trademark examiner may object to descriptiveness under Section 41(3) or 41(4) of the Trade Marks Act 1995 (Cth) when they consider that your brand proposition does not (whether inherently or to a sufficient extent) distinguish your products or services from those of other merchants in the same industry.

This often happens when the proposed mark consists entirely of a sign used to indicate:

  • kindly;
  • quality;
  • the intended purpose;
  • assess;
  • geographic origin; Where
  • another characteristic of the goods and services that the mark represents, hence a “descriptiveness” objection.

Also, everyday words or phrases that have a general meaning will generally be difficult to register as trademarks. For example, any farmer who grows apples should have the right to call their apples “crispy” or “juicy”.

Essentially, the test is whether the mark you are offering is sufficiently likely to indicate to the public that your business, and only your business, is the origin or source of the goods and services, and that the mark does not merely to describe the characteristics of the products and services to which it applies.

A description objection will generally be raised if a mark vaguely describes the goods and/or services offered under the mark, or the place where they are performed, for example, “PERTH PLUMBING” for a Perth-based plumbing services company. Alternatively, a Section 41 objection may be raised where the mark includes a glowing term such as “SUPERIOR”, or a qualitative assessment of the good or service being offered, for example, “FIVE STAR PLUMBERS”.

The rationale for this distinctiveness requirement is that a person (or business) should not have a monopoly on the use of words or phrases that truly describe the goods or services they offer, to the detriment of the rest of the industry.

I received an objection to the description, what should I do now?

A descriptiveness objection can be overcome in a variety of ways, including:

  • modify the goods or services claimed by the trademark application;
  • adopt a logo or stylization that adds distinctive elements to an otherwise descriptive phrase;
  • provide evidence of use of the mark (or, in some cases, evidence of intended future use) to establish actual or projected recognition of the mark in the Australian market;
  • present legal arguments to refute the conclusions of the examiner on the non-distinctiveness of the elements of the mark.
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