Is Your Trademark Descriptive? Why It Could Lead to Rejection in Australia
When it comes to trademarks, there’s one thing that can make or break your application in Australia: distinctiveness.
If your trademark is “descriptive,” it’s probably headed straight for rejection.
In this article, I’m going to show you why rejection of descriptive trademarks in Australia is a common issue, how to figure out if your mark is in the danger zone, and what you can do to avoid costly mistakes.
What Does “Descriptive” Mean in Trademark Law?
Here’s the deal: trademarks exist to help consumers identify between brands, not just to describe what they sell. It’s how you can readily tell whether those are Nikes or Pumas.
A “descriptive” trademark is one that does the opposite—it tells people what your product or service is, but doesn’t distinguish it as yours.
Examples of Descriptive vs. Distinctive Marks
Descriptive: “Fresh Bread” for a bakery. Sure, it’s clear, but it’s also something any bakery may want to use to describe their products.
Distinctive: “Blue Wombat” for the same bakery. Why? It’s unique. It makes people curious. And most importantly, its not that other bakeries would need to use it in the ordinary course of business.
The Legal Backdrop
Section 41 of the Trade Marks Act 1995 (Cth) provides that a trademark must be capable of distinguishing one party’s goods or services from those of another.
Descriptive trademarks are rejected in Australia because they often fail this section 41 distinctiveness test.
Why Are Descriptive Trademarks a Problem?
If you’re thinking, “But I want my name to explain what I do!”—I get it. It feels logical. But here’s the catch:
Descriptive Marks Aren’t Unique: If your trademark directly describes your product or service, anyone else in your industry could and would have the right to use the same words.
It Hurts Competition: Imagine if one bakery could monopolise “Fresh Bread” or one gym could own “Weight Loss.” That’s why trademark examiners focus on rejecting descriptive trademarks in Australia.
You Won’t Stand Out: The goal of a trademark is to plant your brand in people’s minds. Descriptive terms don’t do that—they’re forgettable and easily diluted by similar words and phrases that competitors would use.
How to Tell If Your Trademark is Descriptive
Test #1: Ordinary Signification
Ask yourself: would the average consumer see your trademark as a brand or just as a description? If your name is “Natural Skincare” for cosmetics, most people will think, “Oh, it’s skincare made with natural ingredients.” That’s descriptive.
Test #2: Industry Jargon
Is your trademark a term that’s commonly used in your industry? For example, if you’re in the coffee business and want to trademark “Dark Roast,” that’s going to be a problem.
Test #3: Geographic or Surname Descriptiveness
If your mark uses a geographic location (“Melbourne Coffee Co.”) or a common surname (“Smith Cleaning Services”), it might be considered descriptive unless you can prove it’s become uniquely associated with your business.
What Happens If Your Trademark is Descriptive?
Here’s where the pain kicks in: filing a descriptive trademark can cost you time and money. Here’s why:
Examination Reports and Objections
The trademark examiner will issue a trademark examination report outlining their concerns. Translation: they think your mark isn’t distinctive enough, and you’ll need to respond—usually with arguments or evidence.
Risk of Rejection
If your arguments don’t convince the examiner, your application can be rejected outright. At this point, you’ve spent time, money, and effort, with nothing to show for it.
Additional Costs
Even if you argue that your mark has acquired distinctiveness (we’ll cover this later), it’s going to cost more. You’ll need to gather and submit evidence, which can be both time-consuming and expensive.
How to Avoid Descriptive Trademarks
Here’s the good news: avoiding a descriptive trademark is 100% within your control. Here’s how to do it:
1. Combine Descriptive Terms with Unique Elements
One strategy is to pair descriptive words with something unique or unexpected. For example:
Instead of “Fresh Bread Co.,” try “Koala Breads.”
Instead of “Natural Skincare,” try “Aurora Naturals.”
2. Invent New Words
Some of the best trademarks are completely made-up. Think about brands like “Google” or “Kodak.” These words mean nothing until the brand gives them meaning.
3. Think of Suggestive Marks
A suggestive trademark gives a hint about your product but requires a little imagination. For example, “Jaguar” for cars suggests speed and power without directly describing the product.
4. Get Professional Help
This isn’t a DIY job. A trademark attorney can help you craft a distinctive trademark, saving you from wasting time and money on a name that’s doomed to fail.
What If Your Descriptive Trademark Has Been in Use for Years?
Here’s the exception: if you’ve been using a descriptive trademark for a long time, and it’s become well-known as your brand, you might be able to register it under the concept of “acquired distinctiveness.”
Proving Acquired Distinctiveness
This is no small task. You’ll need evidence like:
Sales figures showing widespread use.
Advertising data proving extensive promotion.
Customer testimonials or surveys showing recognition of your brand.
Even then, it’s not guaranteed. Examiners don’t take this lightly, and proving acquired distinctiveness can be an uphill battle.
Play the Trademark Game to Win
A trademark isn’t just a name—it can be a recognisable brand that sets your business apart. But if your trademark is descriptive, you’re setting yourself up for failure.
When brainstorming for a trademark:
Think outside the box.
Do your research.
Work with a professional to make sure your trademark stands out and stands up to scrutiny.
Don’t let a bad trademark decision hold your business back. Get it right the first time, and you’ll save yourself the headaches—and position your brand for long-term success.
