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What Makes A Trade Mark Distinctive?

A trade mark is a sign that distinguishes your business from others in the market. It can be in the form of word, logo, or even a tagline! Distinctiveness is a condition of registration. An application must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services from the goods and services of other persons. A lack of distinctiveness can also be used as a ground to oppose registration of a trade mark on the grounds that it is generic or distinctive.

Why does your trade mark have to be distinctive?

Consider a trade mark as the identity of your business. This means that your trade mark must distinguish your goods and services from others including your competitors and to help your customers identify your business as the source of a supply. In this way, the mark is a sign that identifies products and services as originating from a specific trader or company.

In Coca Cola v All-Fect Manufacturers, Federal Court said that use as a trade mark is using a sign to indicate a connection in the course of trade between the goods and the person who applies the mark and that the primary function performed by those features was to distinguish the goods from others. That is, to use those features as a mark.

Which trade marks are not distinctive?

The Trade Marks 1995 (Cth) states that trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that are ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services. The test of whether a sign is inherently adapted to distinguish is stated to be:

“whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.”

How do you know if your trade mark is distinctive enough?

Here are some tips on how you can do just that:

1. Being directly descriptive of your product or service is a no-no. The issue here is that your trade mark only describes the products or services to which they are applied rather than identifying the source of the products and services in the marketplace.

2. Give some thought before applying a geographical location on your trade mark. This could limit your customer base and may cause issues with the trade mark examiner because other traders may have a legitimate desire to use that geographical name in connection with the goods or services claimed.

3. Avoid using acclamatory words on your trade mark. Almost every business claim they are “the best” or “the greatest” at what they do. Instead, work on building a positive reputation for your trade mark, so that customers will be able to associate it with quality or excellence.

4. A brand name is something that should be well thought of. It is crucial, especially if the business becomes successful, because your trade mark is tied to it forever.

There is no point investing in a trademark that you can’t register. Registering the mark protects it from competitors, ensures your ownership rights in the mark and makes it easier to enforce your rights against copy cats. For example, in many jurisdictions, marks that identify geographic locations can be difficult to register or protect. Marks that are comprised of the geographic location from where the products or services emanate (whether a street, city, or country) are treated much like descriptive marks and generally are not registrable without demonstrating acquired distinctiveness.

Ensure that the first word in your trademark is as distinctive and unique as possible. It is often necessary to add descriptive words to the trademark in order to convey what is being sold or marketed in association with the mark. If generic words must be included, then it is vital that the first word of the mark be as distinctive as possible. Common names can be used where the words bear no relation to the goods or services of the brand, that is, are not commonly used to describe those goods or services to which they are attached e.g., Apple, Red Bull and Amazon.

When you generate a trade mark or brand name for your business, ask yourself the following questions:

  • Is it likely that my competitors would use the same trade mark?
  • Is my trade mark unique or distinctive enough from other existing trade marks?
  • Will my business be remembered if I use this trade mark?

Our Trademark Lawyers in Sydney are Experts when it comes to Registering Trademark or Trademark Opposition Process in Sydney


Alessandra “Max” Maxine, Digital Administrator

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at

Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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