Clients often tell us that establishing a brand that is descriptive of their business offering will make it a lot easier for customers to understand what their business provides. While this might be true, adopting a descriptive brand is actually very risky for your business from a legal perspective.
The case of Chemist Warehouse losing trade mark enforcement proceedings against their competitor, Direct Chemist Outlet, only proves just how unwise it is to decide on a descriptive trade mark. If this still doesn't faze you, here are three reasons why you should avoid choosing a descriptive brand:
1. Trade Marks Examiner is unlikely to allow descriptive trade marks to proceed to registration
In order to register a trade mark, your mark:
a) must not be substantially identical or deceptively similar to any earlier filed trade marks; and;
b) must be ‘distinctive’ of the goods or services that you provide (rather than descriptive).
If a trade mark is descriptive of the goods or services, the Trade Marks Examiner is unlikely to allow the trade mark to proceed to registration because it would be unfair to allow one person to have a monopoly right over a word or phrase that other traders may wish to genuinely use in the ordinary course of trade.
Whether a trade mark is ‘descriptive’ would also depend on the nature of the goods or services in question. For instance, ‘apple’ would be descriptive of apples or apple trees, whereas ‘apple’ is not descriptive of computer products. In some circumstances, it may be possible to register a descriptive mark if you can submit sufficient evidence to the Trade Mark Examiner to demonstrate that the mark has ‘acquired distinctiveness’ through extensive use over time.
2. A descriptive trade mark might be less enforeceable
It is a defence to trade mark infringement if a person uses a mark in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services under s.122(b)(i) of the Trade Marks Act.
This means that even if you are able to eventually register a trade mark by demonstrating that the brand has acquired distinctiveness through extensive use, you will not be able to enforce your trade mark registration against a third party if they are using their mark in a descriptive way and can rely on the defence in s.122(b)(i).
An example of this is the case of Pepsico Australia Pty Ltd & Anor v The Kettle Chip Company Pty Ltd where it was held that the term ‘kettle cooked chips’ was used descriptively and did not infringe the Kettle Chip trade mark. This is because the use of the word ‘kettle’ referred to the way in which the chips were cooked.
|Handpicked related article: How to Choose a Valuable Trade Mark: A Chemist Warehouse Case Study|
3. You might even risk losing your trade mark altogether
When Chemist Warehouse issued trade mark enforcement proceedings against Direct Chemist Outlet, they not only lost the case but also their trade mark registration.
You can lose your trade mark registration if the Court finds that your trade mark is not sufficiently distinctive as required under the Act.