Why Should My Trade Mark Be Distinctive?

Emily Young

• 4 June 2021
• 28 June 2021
• 4 min read

A trade mark is an excellent way to protect your business’ intellectual property (IP). Indeed, a trade mark can be used to establish your brand’s reputation, protect your assets and help you stand out from competitors. However, a key step in registering your trade mark is proving distinctiveness from other trade marks. This article will take you through: 

• the legal requirement to be distinctive; 
• what gives a trade mark distinctiveness; 
• acquired distinctiveness; and 
• other advantages of distinctiveness in your trade mark. 

Legal Requirement

Having a trade mark that is unique and stands out is a legal requirement. Therefore, if your trade mark is not distinctive, it will not meet the legal requirements of registration 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 other goods or services. 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 unique. However, there are a number of approaches you can take to design your trade mark to be distinctive. Some elements to consider avoiding in your trade mark are:

• trade marks already in use (or trade marks that are too similar to an existing trade mark); 
• words that describe the goods or service you are offering (for example, using the words ‘bread shop’ to describe your bakery);
• a geographical location (for example, calling 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 (words that other businesses will likely need to use cannot be trade marked).

Acquired Distinctiveness  

If your trade mark is unrelated to your business or completely made up, 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 make 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 their 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, giving you a competitive edge and helping 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. Some factors to consider is whether your trade mark:

• is the same or overly similar to another business’ trade mark;
• describes your goods or service;
• includes reference to a geographical location;
• attests to the quality of your goods or service; or 
• uses common names. 

For help with understanding trade marks or any related enquiries, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page to get in touch. 

Frequently Asked Questions