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  • Steve Davey

Should I use descriptive terms in my trade mark?

Many people think its a good idea to use descriptive terms in their trade marks to help consumers understand the nature of their business.

They register logos with the descriptive terms, hoping that the stylisation of the logo will make the overall trade mark sufficiently distinctive for registration. In many cases, the Trade Marks Office will accept stylised logos containing descriptive terms.

applicants are given a false sense of security that they will be able to stop third parties from using the descriptive terms in their logos. It is not the job of the Trade Marks Office to give advice on the enforceability of a trade mark. In many cases,

The reality is that logos containing descriptive terms are almost always unenforceable, as shown in Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75.

Lift Shop Pty Ltd was the owner of trade mark registration number 1198409 for the logo shown below, which covers "elevators (lifts)":

Easy Living Home Elevators Pty Ltd used the term "Lift Shop" in the title of its website and throughout its the home page. When anyone searched on a internet search engine for "lift shop" this result appeared:

Easy Living Lifts | Home Elevators | Lift Shop

Lift Shop [webpage title]

At Easy Living home elevators website you will find details on all of our lifts and home elevators here, which will help you achieve the easy living you deserve.

These terms were included on the webpage to improve Easy Living's rankings on Google.

Lift Shop commenced proceedings for trade mark infringement, misleading and deceptive conduct (in breach of section 18 of the Australian Consumer Law) and passing off for use of the term "Lift Shop" in the title of Easy Living's web page.

However, the court held use of the term "Lift Shop" in the homepage title was descriptive use - not trade mark use. That is, the terms "Lift Shop" were used to characterize Easy Living's business.

Accordingly, the court found that Easy Living did not infringe Lift Shop's registered logo.

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