28 November, 2018
Spruson

Descriptive Composite Marks – Are They Worthwhile?

Descriptive Composite Marks – Are They Worthwhile?

Most trade marks consist of either a plain word, a device (image), or a composite of the two:

(a) Plain word mark. These generally provide the broadest protection as they usually protect the word(s) in any font, colour or stylisation.

(b) Device mark. These are marks which consist of an image or graphic only, with no words. Device marks are usually highly distinctive and often easier to register than word marks.

(c) Composite mark. These consist of a combination of both graphics and words.

One of the most common questions people usually ask is what type of mark to file for?

A business will often use all three types of mark. For instance, their word mark may form the core brand of their business, but their device mark might also be prominent in their packaging, on their website, and on promotional and marketing materials. They may also use the two combined into a composite mark at times.

The best protection is obtained by protecting all three versions of the mark that are being used. However, where cost is an issue (particularly if filing across a large number of classes and countries), it may become necessary to prioritise.

Generally, it is recommended that a business protect the plain word version of the mark as a first priority. However, plain word marks can be very difficult to register if they are descriptive of the goods and services provided by the business. This is because the law contemplates that all traders should be able to use the same or similar descriptive wording in connection with their own goods and services.

For example, the Trade Marks Office would not accept an application for ‘Potato Chips’ in relation to ‘chips’, as all traders who sell potato chips have a genuine need to use this wording. Some examples of descriptive marks are less obvious; e.g. phonetic equivalents of descriptive words, geographical names, acronyms for common phrases, and descriptive words with stylised borders and fonts, etc. Some marks will effectively be impossible to register (Potato Chips being a good example), while others over time might achieve enough reputation to be considered distinctive and registrable.

In the situation where a word mark will be difficult to register, a business may opt to file for a composite mark which consists of the descriptive word or phrase, combined with additional distinctive words and/or graphic elements. While this is often a good tactic to avoid objections by the Trade Marks Office, it is very important to be aware that the rights provided by a registration for such a composite mark are more limited than the rights in a plain word mark.

In particular, composite marks provide protection for the mark as a whole, taking into account all features of the mark. This means that a registration for a composite mark containing descriptive words, is unlikely to provide the owner with exclusive rights to the descriptive words on their own. Conversely, a composite mark containing a highly distinctive word is likely to give at least some degree of protection to that distinctive word.

Going back to the ‘Potato Chips’ example, the following composite marks have been registered in Australia:

Trade Mark No. Trade Mark Relevant Goods
1255980 dirty potato chips Class 29: Potato Chips
1740496 darling spuds potato chips Class 29: potato crisps
1382987 Shannon’s Potato Chips Class 29: chips (French fries)
1715974 native chip Class 29: potato crisps and chips

However, even though the wording ‘Potato Chips’ is wholly incorporated in each of these marks, the owners would not be able to use these registrations to stop other traders from using ‘Potato Chips’ as part of their own mark. Generally, they would only be able to take action against third parties using a mark that is deceptively similar when considered as a whole.

It is also important to understand that a trade mark can only be used to stop someone else from using a similar mark ‘as a trade mark’. Use of a particular phrase or term in a purely descriptive sense will generally not constitute trade mark infringement.

This issue was discussed in a Federal Court decision, Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75. This case considered whether the use of ‘Lift Shop’ in search engine optimisation by Easy Home Elevators Pty Ltd, infringed the following trade mark registration, owned by Lift Shop Pty Ltd:

liftshop

The Court found that the words ‘Lift Shop’ are descriptive of the type of business run by each party. As a result, it was found that Easy Home Elevators Pty Ltd was using ‘Lift Shop’ in a descriptive sense, rather than as a Trade Mark (which is a requirement to establish trade mark infringement).

In view of the above, it was decided that the use of ‘Lift Shop’ by Easy Home Elevators Pty Ltd did not infringe the composite mark owned by Lift Shop Pty Ltd (shown above).

Notwithstanding the above, there are still benefits in filing composite trade marks as:

(a) It may provide a deterrent to other traders who would like to adopt the same or similar mark;

(b) It can act as an obstacle to other traders seeking to register the same words or their own composite marks, effectively acting as a placeholder. The business using the descriptive word mark might then later apply to register the word mark, and file evidence that the mark has become distinctive of their business in the market and therefore should be entitled to registration.

If you have any questions about composite trade marks, please do not hesitate to contact us.


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