In Australia’s competitive marketplace, a trade mark is more than just a logo or name. It’s a legal asset that communicates the origin, reputation, and uniqueness of your brand. But when it comes to trade mark registration and protection, not all marks are created equal. One of the most common mistakes we see at Litton Legal is business owners choosing marks that are descriptive rather than distinctive. Here’s why that’s a problem and how you can avoid it.
What Is a Descriptive Trade Mark?
A descriptive trade mark is one that directly conveys a quality, feature, purpose, or characteristic of the goods or services it represents. Examples include, “Fresh Green Apples” for a business selling organic apples, “Delicious and Creamy” for ice cream, or “Sydney Bus Tours” for a touring service around Sydney. (Be cautious with common surnames too, IP Australia often does not allow these to be registered).
Sometimes descriptive trademarks acquire distinctiveness such as “Kentucky Fried Chicken” (KFC).
In Australia, under the Trade Marks Act 1995 (Cth), descriptive marks face significant hurdles during IP Australia’s registration process. Why? Because they don’t help consumers distinguish your goods or services from those of others. They merely describe them.
What Is a Distinctive Trade Mark?
Distinctive trade marks are those that are unique, memorable, and capable of distinguishing your brand from competitors. These can include:
Arbitrary – most unusual in the context of their use. Some of the most well-known arbitrary trade marks in the marketplace include Apple for computers & technological devices, “Penguin” for books and Subway for takeaway restaurants.
Fanciful – completely made up words. “Kodak” for imaging innovations, “Pepsi” for soft drink beverages or Google for search engine technology are good examples.
Suggestive – these can also be considered distinctive in the context of their use. They suggest some quality of the goods or services they’re describing. For example, “Netflix” for watching “flicks” on the internet, “Vegemite” as a thick paste made from leftover brewers’ yeast extract combined with vegetable and spice additives, or “Weet-Bix” as a whole grain wheat breakfast in the shape of “biscuits.”
These types of marks are inherently stronger from both a legal and commercial standpoint.
Why Distinctiveness Matters
- Legal Protection
IP Australia is unlikely to approve a trade mark application for a descriptive term unless you can prove it has acquired distinctiveness through extensive use. Even then, the protection may be narrow, and enforcement can be difficult. Distinctive marks are much easier to register and defend in case of infringement.
- Brand Value
A distinctive brand name stands out in the marketplace. It’s easier to remember, harder to imitate, and more likely to build strong brand loyalty. Descriptive names, while they may offer initial clarity, often get lost in the noise.
- Global Scalability
If you ever plan to expand internationally, a descriptive trade mark can be a barrier. Different jurisdictions (including the EU and US) also reject registering marks that are merely descriptive. A distinctive trade mark gives you global leverage.
Common Pitfalls: What Not to Do
- Using generic industry terms (e.g “Sydney Plumbing Services”)
- Combining generic words (e.g “Fast Clean Carpets”)
- Relying on common adjectives (e.g “Best”, “Quick”, “Fresh”)
These may be great for SEO, but they’re not ideal for trade marking.
{We’ve written about the risk of Generic Trade Marks in the past. Check out our blog article here.}
At Litton Legal, we help businesses across Australia develop strong, defensible trade mark strategies. We conduct thorough trade mark searches, provide tailored advice on your proposed trade mark, and guide you through the application process with IP Australia (or do it on your behalf). Most importantly, we help you future-proof your brand by ensuring your mark is distinctive, not descriptive.
Get in touch with our team of intellectual property experts here.
