Why Does My Trade Mark Need To Be Distinctive?

Emily Young

• 11 June 2021
• 28 June 2021
• 5 min read

A trade mark is an excellent way to protect your business’ intellectual property (IP). You can use a trade mark to establish your brand’s reputation, protect your assets, and help you stand out from other competitors. A key element of registering your trade mark is proving that it is distinctive from other trade marks. This article will explain why your trade mark should be distinctive and how you can create a distinctive trade mark.

Legal Requirement

Having a distinctive trade mark that is unique and stands out is a legal requirement. If your trade mark is not distinctive, it does not meet the legal requirements, and you will not be able to register your trade mark. This is because the purpose of a trade mark is to distinguish your goods or services from competitors. If a trade mark is not distinctive, you cannot use it for its intended purpose. 

What Makes a Trade Mark Distinctive?

Your trade mark should be completely unique. There are a number of approaches you can take to design your trade mark to be distinctive. To make your trade mark unique, some examples of things to consider avoiding in your trade mark are:

• trade marks already in use – using a trade mark that is identical to or similar to another trade mark already being used will not be considered distinctive; 
• words that describe the goods or service you are offering – for example, you cannot use the words ‘bread shop’ to describe your bakery;
• a geographical location – for example, you cannot call your Melbourne-based hat shop ‘Melbourne Hats’;
• descriptive words about the quality of your goods or services – you should avoid words attesting to quality such as ‘good’ or ‘the best’; and
• common names or surnames – if it is likely that other businesses will need to use these names, they will not be considered distinctive.

With these suggestions in mind, novel and creative trade marks are considered the most distinctive and, therefore, the most successful.

Acquired Distinctiveness  

If your trade mark is novel and creative, it will be considered inherently distinctive. Alternatively, your trade mark can have acquired distinctiveness. Acquired distinctiveness occurs when you have been using your trade mark for a long time exclusively, and your business has become inherently associated with the trade mark. 

If your trade mark has acquired distinctiveness, you will need to show extensive use of your trade mark and demonstrate that the trade mark is widely recognised. This typically occurs over a long period of time, so it will be difficult for a small or relatively new business to show that its trade mark has acquired distinctiveness. 

Other Advantages of Having a Distinctive Trade Mark

As well as being a legal requirement, there are a number of other advantages to having a distinctive trade mark. For example, having a distinctive trade mark can be an excellent marketing tool. A distinctive trade mark will avoid customers confusing you with your competitors. This gives you a competitive edge and helps your brand stand out. This can also reduce any potential legal disputes. If you can demonstrate that your trade mark is distinctive, other businesses will not be able to bring a trade mark infringement claim against you for using a similar trade mark. 

Key Takeaways

Having a distinctive trade mark is both a legal requirement and an excellent marketing tool that can help increase the value of your business’ assets. Some things to consider when determining if your trade mark is distinctive is whether your trade mark:

• is similar or the same as one being used by another business;
• describes your goods or service;
• includes reference to a geographical location;
• describes the quality of your goods or service; or 
• uses common names. 

If you need assistance understanding trade marks, our experienced trade mark lawyers can help. Give them a call on 1300 657 423 or fill out the form on this page to get in touch. 

Frequently Asked Questions