No such thing as a free bar for Mars

The recent decision in Kraft Food Australia Pty Ltd v Mars Australia Pty Ltd has emphasised the importance of ensuring your trade mark is capable of distinguishing your goods or services from those of your competitors.

The requirement for having a trade mark that is capable of being distinguished is set down in the Trade Marks Act 1995 (Cth). The test used to determine whether a trade mark is capable of distinguishing goods is whether the words are commonly used by other traders in the relevant market. If it is a commonly used word, it will be ‘descriptive’ rather than ‘capable of being distinguished’.

The case, heard before a delegate of the Registrar of Trade Marks, involved Mars Australia’s application to trade mark the words ‘Free Bars’. Kraft Food Australia opposed the application on the ground that it was descriptive of all promotions offering free confectionary bars to consumers.

Hearing Officer Thompson agreed with Kraft, stating that Mar’s evidence of use of the words ‘free bars’ does not equate with distinctiveness. It was irrelevant that Mars had shown there was no evidence of use by other competitors of ‘free bars’ as a trade mark. The issue was that other traders would need to use the trade mar for the sake only of its ordinary meaning.

This serves as a timely reminder to any businesses that wish to trade mark a commonly used word or phrase. Even if a business has been using a word or phrase for a period of time, this will not be sufficient to prove that it is sufficiently capable of distinguishing the business’s goods or services from those of its competitors.

For further information or advice on trade mark applications, please contact Certus Legal Group.

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