According to the Trade Marks Practice Manual, the “primary consideration under the Act is the extent to which the trade mark is inherently adapted to distinguish”. S 41 of the Trade Marks Act 1995 provides that if a trade mark is not capable of distinguishing the applicant’s goods and services from those of others, the trade mark must be rejected.

There are circumstances that can result in a trade mark being registrable if, at first, it is judged not capable of being distinctive.

S 17 defines a trade mark as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. In short, a trade mark must serve as a badge that consistently identifies the origin of the goods or services in connection with which the trade mark is used. One or more words that might reasonably be required by a competitor to describe similar goods or services cannot be such a badge.

In Clark Equipment Co v Registrar of Trade Marks [(1964) 111 CLR 51, Kitto J said:

“In Registrar of Trade Marks v W. and G. Du Cros Ltd. (1913) AC 624 at 634, 635) Lord Parker of Waddington having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (ie. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of  R. J. Lea, Ltd. (30 RPC 216 at 227); but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.” (Emphasis added)

Another way of looking at the test has been nicely set out by Kitto J in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537, who summarised the appropriate inquiry as follows:

“The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.”

There are a number of advantages associated with getting this right:

• The trade mark should proceed to registration without too much fuss – saving time and money.
• There is a reduced chance of infringing trade mark rights of a third party.
• Domain name registration is easier.
• Distinctiveness can enhance recall – an important aspect of effective marketing