Gabriel Gewargis, owner of Prestons based retail store 'The
BBQ Store Pty Ltd', was recently unsuccessful in opposing the
registration of a trade mark by a competitor that included the
words 'TheBBQStore'. Mr Gewargis opposed the mark on the
grounds that he was already the legal owner of that trade mark, and
that the mark was so similar to his brand that it would be likely
to deceive or confuse consumers into thinking the companies are
somehow related. Details of the competing marks are set out
Trademark applicant: Plantation
Outdoor Kitchens Pty Ltd Trade Mark
Opponent: The BBQ Store Pty
The Australian Trade Marks Office (ATMO) reviewed the claim,
ruling in favour of Plantation Outdoor Kitchens Pty Ltd. The ATMO
reasoned that when the marks were compared side by side, various
differences made them distinguishable, and that if these
differences were ignored all that was left was the phrase 'The
BBQ Store' - which is merely descriptive of the goods and
The ATMO also reinforced the legal position in Australia that
risks of confusion between brands have to be accepted by companies
who use descriptive words as their brand, as enforcing trade marks
over descriptive words would result in unfair business
The battle between these two companies continues with Plantation
Outdoor Kitchens recently opposing an application by The BBQ store
to register the following mark in an alternative class to the
Watch this space for further details as they emerge.
It's common for businesses to incorporate descriptive
qualities of the services that they provide into their brand and
there are no laws preventing the use of descriptive terms in
business names. However, it is difficult to secure a trade mark
over a descriptive word or phrase in the absence of other elements
to make it distinctive to your brand. In addition, as 'The BBQ
Store' case illustrates, descriptive marks are difficult to
To avoid unnecessary heat from either IP Australia or
competitors, business owners should consider the following when
making brand decisions:
If using words that are descriptive of the goods or services
you provide, use them alongside words that are distinctive to your
individual brand. For example 'John's Magical Toys' as
opposed to 'Sydney Toy Store'. The presence of the
descriptive term is helps with advertising and search engine
optimisation, while the presence of the distinctive words allows
you to protect your company's intellectual property and
Incorporate stylised features such as unique colours and
pictures into your branding to make it more visually distinctive to
Make sure that the registration of your company's business
name, and phrases and images used to promote your brand, are valid
and up to date.
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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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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