Last updated: 
10 September 2020

Section 41 of the Trade Marks Act 1995 deals with whether or not a trade mark is capable of distinguishing your goods and/or services from the goods and/or services of other people.

If a trade mark examiner identifies problems with a trade mark under section 41, it means the applied-for trade mark is considered to lack capacity to distinguish. This means that the mark is unlikely to act as a badge or origin, or indicator of trade source.

Examples of marks which are unlikely to act as a badge of origin include those which are:

  • descriptive of your goods or services
  • containing common surnames or geographic names
  • common to the trade (such as serial numbers, letter and number combinations, commonly used slogans).

The examiner will take this objection based on one of two different subsections:

  • Section 41(3) - Trade marks having no inherent adaptation to distinguish
  • Section 41(4) - Trade marks considered to have limited adaptation to distinguish

The type and amount of evidence you will need to provide will be different depending on which issue is raised. If you believe you can supply evidence, and if you wish to discuss this, please phone the trade mark examiner whose contact details are listed on the examination report.

General evidence you should provide

You must provide evidence in a declaration, showing that your use has led to the trade mark distinguishing your goods or services from those of other traders. Your declaration should include:

  • when the trade mark was first used and the period of use
  • whether or not use has been continuous
  • the geographical extent of the use
  • advertising expenditure and annual turnover figures
  • how your trade mark is used in connection with the goods and services so that it is viewed as a trade mark and not a description of the goods.

The following information is also useful (this is not an exhaustive list):

  • indication of market share

  • individual item cost (this should be considered in the context of turnover figures. Inexpensive goods or services are likely to have a wider market and more competitors than expensive, specialised items).

  • indication of advertising types e.g. television, radio, print, Internet

  • publications/articles mentioning the trade mark

  • indication of customer base (who are the applicant's major customers in Australia or overseas?)

  • indication of distributors (if the applicant sells their goods via a third party, how much presence does the third party have in the market place?)

  • references to Internet website/s where trade mark is used

  • declarations from persons of standing within the relevant trade

  • consumer surveys and/or questionnaires.

Adequate length of use

The longer a trade mark has been in use, the more likely it is to be capable of distinguishing your designated goods or services but the mere fact a trade mark has been used in the trade does not mean it is capable of distinguishing or is likely to become so.

For example, a canned food producer might use the words 'Baked Beans' on their labels for a long period of time. The words could be used in a fancy script, or in different colours.  But whilever the buying public sees these words as the description of the contents of the can, they are not capable of distinguishing the goods of the trader concerned. For this reason length of time is only one factor which the examiner must consider.

Including intended use in evidence

Evidence of intended use is only relevant for section 41(4) issues. Such evidence would need to give a very good picture of your commercial plans. You would need to provide, for example, pre-launch market research and market estimates, product launch plans, and information about advertising and sales plans.  

If a section 41(3) issue has been identified, intended use will not be considered.

Section 41(3) evidence requirements for marks with no inherent adaptation

If your trade mark has been determined to have no inherent adaptation to distinguish, there are specific requirements and limits on the evidence you must provide.

Where a trade mark falls into this category, you will need to provide evidence that at the time you filed your application your mark did distinguish the designated goods or services from those of others. Any use after the filing date, and information about intended use will not help your case.

This is much more stringent than the evidence requirements for other trade marks. It relies only on established use prior to filing. There is no ability to consider other circumstances.

When compiling your evidence, remember that:

  • evidence must show use in Australia before the filing date - the main evidence must demonstrate use in Australia and evidence of use overseas would not of itself be convincing

  • the scope of the registration must reflect the use demonstrated in the evidence - the specification, geographical area or even the trade mark may need to be amended to conform with the use demonstrated in the evidence

  • evidence of intended use and other circumstances will not be considered.