A recent decision before a delegate of the Registrar of Trade
Marks serves as a timely reminder to potential trade mark
applicants that it is a fundamental requirement that in order to
achieve registration, a trade mark must be capable of
distinguishing the relevant goods or services from those of other
On 3 December 2008, Mars Australia Pty Ltd
("Mars") applied for registration of the
trade mark FREE BARS for a range of class 30 goods, including
confectionary. The FREE BARS trade mark application was examined by
IP Australia and accepted without objection. Kraft Foods Australia
Pty Ltd ("Kraft") subsequently opposed
registration on the basis that FREE BARS was a phrase that was not
capable of distinguishing Mars' goods from those of other
traders. The onus fell to Kraft to prove the ground of opposition
upon which it relied.
Section 41(2) of the Trade Marks Act 1995 (Cth)
provides that "[a]n application for the registration of a
trade mark must be rejected if the trade mark is not capable of
distinguishing the applicant's goods or services in respect of
which the trade mark is sought to be registered from the goods or
services of other persons".
In assessing whether FREE BARS was inherently adapted to
distinguish Mars' class 30 goods, Hearing Officer Thompson
cited the test adopted by Kitto J in Clark Equipment Company v
Registrar of Trade Marks  HCA 55:
"[T]he question whether a mark is adapted to
distinguish [is to] be tested by reference to the likelihood that
other persons, trading in goods of the relevant kind and being
actuated only by proper motives - in the exercise, that is to say,
of the common right of the public to make honest use of words
forming part of the common heritage, for the sake of the
signification which they ordinarily possess - will think of the
word and want to use it in connexion with similar goods in any
manner which would infringe a registered trade mark granted in
respect of it."
In support of their opposition, Kraft argued that the expression
FREE BARS was descriptive and incapable of distinguishing the
applicant's goods from other traders because of the common use
of the terms in confectionary trade promotions.
In turn, Mars argued that aside from its own use, there was no
evidence of third party use of FREE BARS as a trade mark and that
registration would not prevent other traders from using alternate
words to impart the same message to Australian consumers of
In upholding Kraft's opposition, and refusing to register
FREE BARS, Hearing Officer Thompson noted that:
Mars' submissions had misstated the test for inherent
adaptation as the test is not whether other traders have
used the phrase FREE BARS as a trade mark, but rather,
whether other traders will need (without improper motive) to use
the trade mark for the sake only of its ordinary meaning; and
Mars had vitiated any prospect that the FREE BARS trade mark
could ever be distinctive of, or distinguish, Mars' goods by
using the words FREE BARS in an ordinary sense in expressions
appearing on and within the packaging, such as "to receive
your free bar" and "you don't win a free
The Hearing Officer also emphasised that mere use does not
equate with distinctiveness, and the fact that there may be other
legitimate ways of conveying a message will not mean that a trade
mark is capable of distinguishing the goods or services for which
protection is sought.
Merely using words in relation to your products does not mean
that you can make those words distinctive of your products.
Trade mark applicants should try to choose distinctive trade
marks that are unlikely to be required by their competitors to
describe the goods or services in question and which are capable of
distinguishing their goods and services from those of other
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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