Marketers should consider their brand plan when seeking to adopt a trade mark consisting of ordinary expressions. In particular, they should devise a plan to use such a trade mark separately from any other distinctive branding in order to obtain trade mark registration.
In the recent ATMO decision MAKE YOUR JOB EASY! [2012 ATMOS 39], the Office confirmed that slogans with everyday meaning should be rejected under s41(6) of the Act, particularly when such a slogan is only used in combination with a distinctive house brand.
In this case, the MAKE YOUR JOB EASY! slogan of Kennards Hire Pty Ltd was one in common use for the relevant goods and services nominated under the application. The Office rejected the application on the basis that it was insufficiently distinctive.
Kennard’s evidence showed that:
- the slogan was ‘subservient’ to the house mark
- the slogan was invariably used in conjunction with the house mark
- the slogan never stood alone (as it did in the application)
Accordingly, the Office concluded that the slogan trade mark did not acquire its own secondary meaning to denote the goods or services of Kennards. In fact, it fell a ‘long way short of qualifying’ for registration in its own right.
The decision confirms that best practice to acquire trade mark rights in a common expression is to use the brand in a spatial, temporal and visual distance from any other branding.