Grey Skies and Silver Linings: A Critical Assessment of Trade Mark Distinctiveness Under Australian Law, Part 2

(2015) 102 Intellectual Property Forum 15-30

UNSW Law Research Paper No. 2016-38

27 Pages Posted: 3 Jul 2016 Last revised: 4 Jul 2016

See all articles by Michael Handler

Michael Handler

University of New South Wales (UNSW) - Faculty of Law

Date Written: 2015

Abstract

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

Suggested Citation

Handler, Michael, Grey Skies and Silver Linings: A Critical Assessment of Trade Mark Distinctiveness Under Australian Law, Part 2 (2015). (2015) 102 Intellectual Property Forum 15-30, UNSW Law Research Paper No. 2016-38, Available at SSRN: https://ssrn.com/abstract=2803060

Michael Handler (Contact Author)

University of New South Wales (UNSW) - Faculty of Law ( email )

Kensington, New South Wales 2052
Australia
+61 2 9385 2874 (Phone)

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