Overcoming Distinctiveness Objections – Section 41

When it comes to registering a trade mark in Australia, Section 41 of the Trade Marks Act 1995 plays a crucial role. This section gives IP Australia the power to reject your application if your trade mark isn’t capable of distinguishing your goods or services from others. In plain terms, if your trade mark sounds too generic, too descriptive, or too common, it might not make the cut. But don’t worry, this doesn’t mean your application is doomed.

What Does “Capable of Distinguishing” Actually Mean?

The important thing is, your trade mark should help consumers identify your business as the source of particular goods or services. That’s what “capable of distinguishing” means, i.e. the trade mark tells people, “This product or service comes from you, not someone else.”

Section 41 makes it clear that a trade mark must not be rejected unless it’s clear that it can’t do this job. So, there’s actually a presumption in your favor. Examiners must have a valid reason to believe your mark doesn’t meet the standard before they can reject it.

But how do they decide?

The ordinary meaning test

The first thing an examiner looks at is the ordinary meaning (or “ordinary signification”) of the trade mark, in the context of the goods or services listed.

For example-

• If your mark is the word “Apple” for selling actual apples, that’s a problem, i.e. it’s purely descriptive.
• But “Apple” for computers is fine, because it doesn’t describe anything about the goods themselves.

The next step is to ask whether other traders are likely to want to use that word (or a similar one) in connection with their own goods or services, without any bad intent. If yes, your trade mark may be too generic.

During examination, your trade mark will usually fall into one of three categories-

• Clearly distinctive- These marks are inherently adapted to distinguish. They’re often invented words (like “XEROX”) or unique logos. These are the easiest to register.
• Somewhat distinctive- These have limited inherent adaptation to distinguish. They might be descriptive or suggestive, but not the only way to describe something. With the right supporting evidence, these can often be registered.
• Not distinctive at all- These marks are generic, directly descriptive, or made up of words that everyone in the industry might need to use (like “Best Burgers” for a burger joint). These are the hardest to get registered and often require strong evidence of acquired distinctiveness through use.

The role of evidence

If your trade mark isn’t inherently distinctive, we can still make a strong case by showing that it’s become distinctive through use. This means gathering and presenting clear evidence that-

• You’ve been using the trade mark publicly for a significant period
• Consumers associate the trade mark with your business
• You’ve advertised it, built up recognition, and used it prominently

IP Australia doesn’t need absolute proof, but they do need to be convinced on the balance of probabilities that your trade mark distinguishes your goods or services from others.

How has the law changed?

Before the 2012 Raising the Bar reforms, Section 41 included a complex decision-making process that put more burden on the applicant. The updated version simplifies things and confirms that the presumption of registrability applies, which is a win for applicants.

Now, instead of making you prove why your mark should be registered, the onus is on the examiner to show why it shouldn’t. That being said, the final decision still comes down to whether the mark is capable of doing its job, i.e. helping consumers recognize your business.

What kind of trade marks typically get rejected?

Here are some common troublemakers under Section 41-

• Generic terms- Like “Milk” for dairy products.
• Geographical names- Like “Oregon” or “Oxford,” especially when the name has a recognized connection to the goods or services.
• Descriptive words- Like “Smooth” for skin care or “Fast” for delivery services.
• Highly laudatory terms- Like “Perfect” or “Best.”
• Images that depict the goods- Like a photo of a cupcake for a bakery.

But don’t be discouraged. If your mark falls into one of these categories, that doesn’t mean you can’t register it, it just means we’ll need to dig a bit deeper and possibly provide evidence to support it.

A Strategic Approach to Registrability

At our firm, we specialize in identifying Section 41 issues early and building a strong strategy around them. Here’s how we typically work with clients-

• We look at your proposed trade mark and assess its inherent distinctiveness. If we spot potential red flags, we’ll explain the risks and outline your options.
• We may recommend tweaking the mark, adding stylization (like a unique font or graphic element), or narrowing the list of goods and services to avoid conflicts.
• If needed, we’ll help you gather and format evidence of use—this might include examples of packaging, advertisements, customer testimonials, and sales data.
• We handle the communications with IP Australia and respond to any objections that might arise, including detailed arguments and legal references where needed.

What if you’ve already filed and received a section 41 objection?

Don’t panic. A rejection under Section 41 isn’t the end of the road. In many cases, it can be resolved by providing-

• Clear evidence of use
• Amended claims about the scope of goods or services
• A fresh explanation of how the mark works in your specific market

We’ve helped many clients successfully overcome objections, even with marks that initially looked problematic.

Key Takeaways for Applicants

• The trade mark must clearly or potentially identify your goods or services as coming from you, and not someone else.
• If your mark is descriptive, generic, or commonly used, it’s likely to raise red flags under Section 41.
• Evidence of use can save the day, but only if it’s specific, credible, and well-presented.
• The law now presumes your trade mark is registrable, which means the examiner needs a good reason to knock it back.
• Working with an experienced team gives you the best chance of getting it right the first time, or fixing it if needed.

Section 41 doesn’t have to be a stumbling block. With a clear understanding of how the law works and the right support behind you, even a borderline trade mark can be positioned for success.

If you’re planning to file a trade mark, or you’ve hit a snag with an existing application, our team is here to help. We’ll give you practical advice, handle the legal arguments, and make sure your application is as strong and distinctive as your brand deserves.