Can I Trademark a Phrase?

Author: Zeinab Farhat, Progressive Legal

If you’re looking to trademark a phrase, it’s crucial to understand which phrases qualify for registration and the legal criteria involved. Failing to address these issues early can lead to higher costs, especially if your application is rejected due to a lack of distinctiveness, a common issue for descriptive phrases.

To help you avoid costly mistakes, this article covers:

• What is a Trade Mark

• Whether you can trademark a phrase

• How to assess if your phrase is distinctive

• Whether phrases can be protected by other forms of IP

• Key takeaways for business owners

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 trader’s goods and/ or services from those 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? 

Yes, you can trademark a phrase, provided it meets certain legal criteria. The most important factor? Whether your phrase is distinctive.

Under Section 41 of the Trade Marks Act, a trademark application will be rejected if the phrase isn’t capable of distinguishing your goods or services from others in the market. This often happens with phrases that are too descriptive or commonly used in your industry.

How can I establish whether a phrase is distinctive?

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

To determine if a phrase is distinctive enough to be trademarked, assess whether it’s inherently adapted to identify your goods or services.

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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