ExoticLimo proves problematic for Exoticar

The proliferation of private car hire and limousine companies makes naming a business in the industry quite an exercise. A recent decision of the Australian Trade Marks Office has shown that finding a striking or inventive name can be difficult.

The parties

Mr Dimokranitis (Exoticar) operates a car hire business called Exoticar. He registered the trade mark:

exoticar

Exotic Limo Pty Ltd (Exotic Limo) also operates a car hire business and applied to register the trade mark:

exoticlimo

Exoticar objected to the registration of Exotic Limo’s trade mark on the basis that it:

[list_roman]

  1. was substantially identical with or deceptively similar to his own registered trade mark; and
  2. would likely deceive or cause confusion as his own trade mark had acquired a reputation.[/list_roman]

The decision

The delegate of the Registrar of Trade Marks dismissed both objections.

In respect of the first objection, the delegate simply did not consider the two trade marks to be deceptively similar, stating that she “was not satisfied that there is a real tangible danger of confusion between these two trade marks”.

In relation to the second objection, the delegate found that Exoticar had insufficient reputation at the time that Exotic Limo lodged its application for trade mark registration. Further, the delegate did not consider the word “exotic” to be a “particularly striking or inventive term when applied to car hire services”. It is worth noting that Exotic Limo produced a number of print outs of Google searches showing numerous other traders using the word “exotic” to describe their cars and car hire services.

The consequences

This case serves as a reminder of the benefits of using a distinctive trade mark. Even though Exoticar used an invented word, it still contained a term that was common within the industry and therefore was unable to prevent others from using it.

The law’s attitude to descriptive trade names is best described in this passage by Justice Stephen from the High Court case Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited:

There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public.

For assistance with your trade mark, please contact Certus Legal Group.

Tags

top