Grey Skies and Silver Linings: A Critical Assessment of Trade Mark Distinctiveness Under Australian Law, Part 2
(2015) 102 Intellectual Property Forum 15-30
27 Pages Posted: 3 Jul 2016 Last revised: 4 Jul 2016
Date Written: 2015
This is the second of two articles providing a critical analysis of the Australian law of trade mark distinctiveness, focusing on descriptive or laudatory word marks. Having addressed the High Court’s problematic decision in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd in Part 1, In this article, I turn to address a number of other issues relating to the “first step” of the distinctiveness enquiry that have been raised in recent Federal Court and Trade Marks Office decisions. I then turn to the “second step” of the distinctiveness enquiry, namely, factual distinctiveness, showing some of the difficulties applicants for registration for descriptive or laudatory marks have faced in attempting to show their marks have become, or are likely to become, distinctive. By way of conclusion I make some recommendations for legislative reform, as well as suggesting what owners of descriptive or laudatory word marks might be able to do to so as to secure protection for such marks, in light of recent case law.
Keywords: Australia, trade mark distinctiveness, Federal Court, Trade Marks Office
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