When is a trade mark known more as a mark than what it means in a non-English language?

/ Lucy Deane / Articles

AMORE, GIALLO, FELICE, BELLO, BLANC BLEU are but a handful of the many foreign language words that are registered as trade marks in Australia.

But care must be taken not to assume (as one may be tempted to from a cursory glance at the Australian Register of Trade Marks) that words in a non-English language will more easily satisfy the requirements for registration as a trade mark in Australia.

The registration requirement of most relevance to trade marks comprising foreign language words is the requirement (set out in section 41 of the Trade Marks Act 1995 (Cth)) that a trade mark be “capable of distinguishing” the applicant’s goods or services from those of other persons.

When considering the application of section 41, the relevant enquiry will initially be whether a trade mark is “inherently adapted to distinguish” the applicant’s goods or services.  If a trade mark is “inherently” or prima facie adapted to distinguish, it will not attract an objection to registration under section 41.

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