All that Glitters Is Not Gold: A Critical Assessment of Trade Mark Distinctiveness Under Australian Law, Part 1

Abstract

This is the first of two articles providing a critical analysis of the Australian law of trade mark distinctiveness, focusing on descriptive or laudatory word marks. This article provides a brief overview of the distinctiveness requirement in registered trade mark law, how the two stages of distinctiveness are assessed and the complex way in which section 41 of the Trade Marks Act 1995 (Cth) operates. It then provides a detailed, critical analysis of the High Court’s 2014 decision in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd. I argue that although the decision has clarified some aspects of the Australian law of distinctiveness, there are a number of significant problems with the Court’s reasoning, such that new complexities have, unfortunately, been added to this already problematic area of the law.

Keywords: trade mark distinctiveness, Trade Marks Act 1995, Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, Australia