Key takeaways
Names and phrases that comprise ordinary English words that directly describe the services offered, like "Melbourne Bone and Joint Clinic", are difficult to secure as registered trade marks, due to their lack of distinctiveness.
Sole practitioners should ensure their trade mark is used prominently, and not overshadowed by personal names or other branding elements, in all business and marketing materials, when trying to show use of the trade mark.
When trying to prove a word trade mark has acquired distinctiveness, it’s crucial to provide clear evidence of the mark’s use in its plain text form, and not as part of a composite mark or in a stylised font or design.
Earlier this year, the Federal Court of Australia dismissed an appeal by Melbourne Bone and Joint Clinic Pty Ltd (MBJC) against the decision of the Trade Marks Registrar to refuse MBJC’s trade mark application (Application) for the plain words “Melbourne Bone and Joint Clinic” (Word Mark) on the basis of section 41(3) of the Trade Marks Act (the Act).
In case it wasn’t obvious enough, MBJC operates an orthopaedic clinic – named Melbourne Bone and Joint Clinic (Clinic) – in inner-city Melbourne, and the Application claimed medical reporting services in class 35 and various surgical, health clinic and other medical services in class 44 (Services). At all relevant times prior to the filing date of the Application, the sole practitioner providing the medical services under the banner of the Clinic was Dr Jain, an orthopaedic surgeon.
Justice Moshinsky made no bones about the fact that the Word Mark was plainly descriptive of the Services provided by MBJC, and the Word Mark was therefore not to any extent inherently adapted to distinguish the Services from the goods and services of other traders. Accordingly, the descriptiveness objection under section 41(3) of the Act was correctly applied by the Registrar. After considering MBJC’s evidence of use of the Word Mark prior to the filing date of the Application, his Honour was also not convinced that MBJC had used the Word Mark to such an extent that the mark had acquired distinctiveness under section 41(3)(b) of the Act.
The case is a timely refresher on the bare bones of the descriptiveness objection as it applies to word trade marks, and the types of evidence required to convince the Registrar or a Court that a plain word mark should be allowed to proceed to registration on the basis of acquired distinctiveness.
If you provide specialist services as a sole practitioner and you are considering a new brand name for your business, below are our top tips on:
- what you can do before you file a trade mark application, to reduce the risk of a descriptiveness objection being raised against your application; and
- what you can do to improve the prospects of overcoming that objection, if it was raised against your application.
Trust your gut
You have just spent an hour on Google and you have made the jaw-dropping discovery that none of your competitors appear to be using a particular term or phrase which you were hoping to use as your brand name. If you are genuinely surprised that your desired term or phrase appears to be “available” for exclusive use as a badge of origin for your business, it may just be too good to be true.
During cross-examination, Dr Jain in this case admitted to his genuine surprise when he purportedly discovered that no other orthopaedic surgeon in Australia was using the words “bone and joint” to describe their clinic, at the time he was choosing a brand name for the Clinic in 2014. He expressed similar shock that the domain name “boneandjointclinic.com.au” was available for registration.
Though Dr Jain’s belief about the total lack of usage of the phrase “bone and joint” in the names of Australian orthopaedic clinics was most likely incorrect, Moshinsky J inferred that Dr Jain’s genuine surprise was indicative of his belief that the phrase was descriptive of at least some of the services provided by a typical orthopaedic clinic, namely services relating to a patient’s bones and joints. The Word Mark was therefore prima facie unregistrable due to its descriptiveness, or lack of inherent distinctiveness.
Accordingly, when picking a brand name for your business, it is important to trust your gut. If you are genuinely surprised that a competitor has not already adopted your desired term or phrase as a brand name, there is a high chance this is because that term or phrase is descriptive of some characteristic of your goods or services, which makes it more difficult – and in some cases impossible – for you to secure trade mark registration and obtain exclusive rights to use that term or phrase as a brand name.
Consult a dictionary
Aside from trusting your gut, another way of assessing whether your desired brand name may be too descriptive of your goods or services, is to consider the ordinary meaning of each word in your desired brand name, from the perspective of your existing or target consumers.
In determining whether the Word Mark lacked inherent distinctiveness, Moshinsky J applied the well-established two-part test in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 (Modena), which required a consideration of:
- the ordinary meaning of the mark in Australia, and whether, in light of that ordinary meaning, the mark makes a direct reference to the relevant goods or services in relation to which the mark is intended to be used; and
- whether other traders have a legitimate desire to use the mark, or a similar mark, to describe the same or similar goods or services.
When applying the first part of the test in Modena, Moshinsky J took the view that, to ascertain the ordinary meaning of the Word Mark in Australia, it was necessary to consider the ordinary meaning of each word in the mark, namely:
- “Melbourne”: a geographical word referring to the capital of the State of Victoria, Australia;
- “Clinic”: an establishment associated with the provision of medical services; and
- “Bone” and “Joint”: parts of a patient’s body.
His Honour found that, when read together, the words in the phrase “Melbourne Bone and Joint Clinic” meant exactly that: an establishment in Melbourne which provides medical services in relation to a patient’s bones and joints. His Honour also consulted the Macquarie Dictionary, which defines the word “orthopaedics” as “the correction or cure of deformities and diseases of the spine, bones, joints, muscles, or other parts of the skeletal system”. Given the inclusion of the words “bones” and “joints” in this definition, his Honour held that the Word Mark directly referred to aspects of the orthopaedic services claimed by the Application, and as such, the descriptiveness objection was correctly applied by the Registrar.
Promote your business’ brand name, not your name
To overcome the descriptiveness objection, MBJC argued that the Word Mark had acquired distinctiveness through around six years of use prior to the filing date of the Application, and submitted evidence in the form of: business documents such as letterheads, patient registration forms and prescription slips; print promotional material such as business cards and trifolds; online material such as email signatures, domain name registration and the Clinic’s Google business profile; and various educational material.
After reviewing each type of evidence submitted, Moshinsky J found that, in many cases, the Word Mark was featured in close proximity to Dr Jain’s name. For example, in the letterhead replicated to the right, which was submitted as part of MBJC’s evidence, Dr Jain’s name, title and provider number were displayed prominently at the top of the letterhead. In contrast, the Word Mark was displayed below this information, in a smaller font.
It is understandable that Dr Jain’s name appeared first and foremost in business documents and promotional material given that the doctor was the sole practitioner providing medical services under the banner of the Clinic during the relevant period. As the Clinic was a referral-based practice, it made commercial sense for MBJC to focus on promoting Dr Jain, as patients were referred to the Clinic to be treated by the doctor personally, using his expertise.
However, Moshinsky J found that the focus on promoting Dr Jain – though understandable – also diminished the extent to which the Word Mark, as disclosed in the evidence filed by MBJC, had acquired distinctives through use. Accordingly, to improve the prospects of successfully overcoming a descriptiveness objection, sole practitioners should ensure that their trade mark is used prominently in any evidence filed with IP Australia, and that their trade mark is not overshadowed by other branding elements, such as their personal name.
Show use of the mark as filed
This sounds like a no-brainer but it can be a deal breaker: where the trade mark in question is a word mark, any evidence filed with IP Australia should demonstrate use of the word/s of the mark in plain text, rather than a stylised version of the word/s, or as part of a composite mark. In this case, MBJC’s reliance on use of its composite mark (see below) which is the subject of a separate trade mark registration, as evidence of use of the Word Mark, did not help persuade the Court that the Word Mark, on its own, had been used to such an extent that it was capable of distinguishing the Services from similar services offered by other medical practices.
To the contrary, Moshinsky J found that the use of the composite mark was likely to have diminished the extent to which the Word Mark, alone, was capable of distinguishing the Services as those of MBJC.
Compared to the Word Mark, the composite mark features additional components, such as the rectangular device containing an image of two bones forming a joint, which enhance the distinctiveness of the composite mark as a whole. Accordingly, to the extent that the composite mark, because of those additional features, is inherently capable of distinguishing the Services from similar services offered by MBJC’s competitors, or has acquired distinctiveness through use, the same cannot be attributed to the Word Mark, given that the Word Mark lacks those additional features.
For sole practitioners who have filed multiple trade mark applications (for example, for a word mark and for a composite mark) against which the same descriptiveness objection has been raised, it may be tempting to file a single set of evidence, demonstrating use of both the word mark and the non-word mark, to attempt to overcome the objection raised against all applications. If you choose to adopt this approach, it is important to ensure that the evidence is presented in a way that makes clear which examples apply to the word mark, and which examples relate to the non-word mark, in order to avoid the evidentiary pitfalls in this case.
You can access the full text of Justice Moshinsky’s decision here.