Sally Scott, partner at law firm Hall & Wilcox, told SmartCompany the key issue is whether the trademark College of Law mark is generic and too descriptive or whether, through use, it has become distinctive of the College of Law in Sydney.
Scott says a mark that appears to be very descriptive can be registered as a trademark if, through extensive use, it has become distinctive like The Body Shop.
“There is little doubt that the College of Law in Sydney has used the mark for an extensive period and that many in the legal industry identify the mark with the college in Sydney,” she says.
“This may be enough for the college in Sydney to succeed with its case, despite the mark inherently being quite descriptive.”
Scott says businesses need to ensure that if they have a valuable mark, they register it as a trademark and monitor the market for any unauthorised use of the mark, a process which can be done relatively easily these days via Google.
“If a business does identify that its mark is being used by others, it needs to move quickly to stop that use,” she says.
“Otherwise, the mark could lose its distinctiveness and the trademark owner could lose registration of the mark and its exclusive right to use the mark.”
Scott says from the point of view of trademark registration, businesses are generally better choosing marks that are not descriptive, for example the name Telstra is not descriptive as it is an invented word.
“Non-descriptive marks are more likely to be accepted for registration and registration is less likely to be revoked,” she says.
However, Scott acknowledges there can be a commercial advantage in choosing a descriptive mark.
“If a company wishes to use a descriptive mark, it should try to gain distinctiveness as soon as possible through extensive marketing and use,” she says.
The College of Law will be hoping it has managed to do just that in order to succeed in the Federal Court.
