Can I Trademark a Phrase?

Author: Zeinab Farhat, Progressive Legal

If you’re considering registering a trade mark as a phrase, it is important to understand what phrases can be registered, and any criteria associated with examining the registrability of a mark. A failure to consider these issues from the outset can lead to increased costs for a trade mark application. This is especially true where an adverse report is issued after the examination stage citing issues such as a lack of distinctiveness, which is likely to be a common objection raised against phrases which contain descriptive words.

This article will consider: what is a trade mark, can I trademark a phrase, how to establish whether a phrase is distinctive, can a phrase be protected by other forms of intellectual property and key takeaways. 

What is a trade mark?

Section 17 of the Trade Marks Act 1995 (Cth) (“the Act”) defines a trade mark as “.. a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.  

A trade mark can be a wide range of things, including but not limited to: a logo, word, letter, colour, sound, smell, picture and/ or phrase. As section 17 provides, it is also an inherent requirement of the definition of a trade mark, that the trade mark itself is distinctive. A trade mark is distinctive where it is capable of distinguishing a traders goods and/ or services from that of other traders. A trade mark will not be distinctive if it is descriptive and contains material that other traders are likely to want to use in connection with their goods and/ or services.  

A trade mark may still be capable of registration where an objection is raised pertaining to a lack of distinctiveness (under s 41 of the Act). However, overcoming such objections can be costly and time consuming as substantial evidence of use is required to be submitted in order to overcome the raised objection(s).  

Can I trademark a phrase? 

As outlined above, you can trademark a phrase.  

Often, the key consideration for ascertaining whether you should proceed with applying to trademark a phrase is whether the phrase itself is distinctive. Section 41 of the Act provides that an application for a trade mark needs to be rejected if it is not capable of distinguishing the goods and/ or services of the applicant (s 41(1), the Act). Sections 41(3) and (4) provide the grounds upon which such rejection is to be made upon.  

How can I establish whether a phrase is distinctive?

In order to determine whether a trade mark is distinctive, an enquiry must be made as to the extent of whether the mark is inherently adapted to distinguish the applicant’s goods and/ or services.  

In ascertaining whether a trade mark is inherently adapted to distinguish the goods and services of a trader from another, consideration must be given to several questions, namely: 

1. “whether the trade mark holds an “ordinary signification” to those who would purchase, consumer or trade in the claimed goods or services; and
2. then, having determined the “ordinary signification”, the likelihood of the mark being desired for use by other traders in the ordinary course of business, without improper motive, upon or in connexion with their goods or services”

(Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, [70] – [71] (French CJ, Hayne, Crennan and Kiefel JJ).

In relation to ordinary signification, such enquiry relates to whether the words themselves are capable of conveying meaning to ordinary persons in Australia about the quality of the goods and/ or services.  

Once the above has been considered, usually three conclusions are reached: 

1. that the mark is inherently adapted to such an extent that it is prima facie distinctive (and thereby registrable);
2. that the mark is inherently adapted to some extent, but not enough to render it distinctive (thereby prima facie unregistrable); or
3. the mark is not inherently adapted to any extent (thereby prima facie unregistrable).

What words are likely not to be distinguishable?

If you attempt to trade mark a phrase which includes words which indicate the kind, quality, quantity, intended purpose, value and geographical location of the goods or services you offer, its likely your mark will have a s 41(3) or s 41(4) objection raised against it. For example, a s 41 descriptiveness objection is likely to be raised against the words “PERTH AUSTRALIA PLUMBING”.  

However, this does not mean that your application is completely precluded from registration.  

How can I overcome a phrase which is likely not to be distinctive enough?

Should you apply to trade mark a phrase which has a s 41 objection raised against it, you can still try to overcome this objection by: 

1. considering amending your specifications; and/ or
2. filing evidence of use; and/or
3. making legal submissions. 

However, the adverse report will cite what is required from the applicant in order to overcome an objection.  

Prior to applying for registration, you should consider the above points and obtain legal advice about the prospective registrability of phrases you would like to register. It may be the case that certain phrases are already on the register, or, you do not have sufficient evidence of use so as to overcome raised objection(s). In such event, it may be a more commercially sound decision to reconsider the phrase you are seeking to register in order to maximise the likelihood of proceeding to registration without an adverse report.

Can a phrase be protected by other forms of intellectual property?

Often, people believe that a phrase can be protected by copyright in addition to attracting protection through trade mark registration.  

However, case law suggests that a phrase is often insufficiently original as to attract copyright protection. For example, in Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984 it was held that copyright did not subsist in newspaper headlines, however the Court did not definitively state that copyright could never be found to subsist in a headline (at [50]).

Key takeaways

If you are considering whether to trademark a phrase, it is important to consider the legal requirements governing the registrability of a mark. Some key considerations are: 

Have you conducted a search as to whether there are any existing marks already on the register?; and

If not, have you considered whether the phrase is sufficiently distinctive? In answering this, consider whether the phrase is descriptive of the services and/ or goods that you offer and whether other traders would want to use those words in relation to their goods and/ or services; and

Whether you have obtained legal advice from an Intellectual Property Lawyer regarding your phrase and any potential issues that may arise from applying for registration (such as overcoming s 41 objections etc).

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