The heat is on - Using descriptive words in your brand name
Assisted by Kirstie Barfoot
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 below:
|Trademark applicant: Plantation
Outdoor Kitchens Pty Ltd Trade Mark
|Opponent: The BBQ Store Pty Ltd
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 services concerned.
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 monopoly.
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 initial dispute:
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 enforce.
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 associated goodwill
- Incorporate stylised features such as unique colours and pictures into your branding to make it more visually distinctive to consumers
- 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.
If you have any questions please contact: