Weeding out weak trade marks – the case against descriptive brands

There are perceived benefits to using trade marks that plainly allude to the character or purpose of the associated goods. A trade mark such as WEED ‘N’ FEED, for example, which is used by Dulux Group (Australia) Pty Ltd, clearly informs consumers that the product in the bottle provides the functions of both a herbicide and a fertiliser. However, a disadvantage of descriptive phrases is that they can be difficult to register and defend as trade marks, and may attract opposition from competitors wishing to market similar products.

Dulux Group has recently experienced this drawback first-hand, in an opposition decided by the Trade Marks Office (OMS Investments v Dulux Group (Australia) Pty Ltd).

Background

Dulux Group filed an application in October 2007 for the mark WEED ’N’ FEED, covering various goods in Classes 1 and 5.

The mark was accepted on the basis of evidence of use filed in support of the application, but was subsequently opposed by OMS Investments on the basis that WEED ’N’ FEED lacked distinctiveness.

Capable of distinguishing?

Dulux Group accepted that the mark was not inherently adapted to distinguish its goods from those of its competitors, but argued that it had some degree of adaptation to distinguish. Consequently, it submitted, evidence of use after the priority date could be considered in assessing whether the trade mark had in fact become distinctive.

The Hearing Officer agreed with Dulux that WEED ’N ’ FEED had a “trade mark feel”, but nevertheless balanced this with the fact that the term ‘weed and feed’ and the colloquial ‘weed ’n’ feed’ would be used equally by other traders in a non-trade mark sense. This was established in the evidence, which showed some use of the mark descriptively by various individuals, who were unconnected with the applicant or opponent.

Accordingly, the mark WEED ’N’ FEED was considered devoid of adaptation to distinguish. The evidence therefore had to establish that the mark did, at the filing date, distinguish the Applicant’s goods.

Acquired distinctiveness?

The Hearings Officer believed that the evidence filed by Dulux Group did not support registration. In particular, the bulk of the evidence filed showed use of the mark WEED’N’FEED in close proximity to the ‘YATES’ housebrand. This type of evidence did not support that the WEED’N’FEED mark had a reputation on its own.

Conclusion

The decision confirms that an opposition based on distinctiveness can be established if a term (or a colloquial equivalent) is used in the ordinary sense by other traders – particularly by traders other than the parties to the opposition. Further, for marks which are considered devoid of distinctive character, the nature of evidence in terms of duration of use, and format of use (with or without another brand) might be the deciding factor in the fate of an application.

The lesson here is that while descriptive trade marks may save effort in educating consumers about the nature or use of a branded product, they can be difficult to protect and defend against competitors.

Share