Choosing your trade mark – make sure it is distinctive

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In the recent Federal Court decision of Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd, the court ordered the removal of the registered trade mark for “Persian Fetta” from the Trade Marks Register on the basis that it was not distinctive. 

The case serves as a lesson that even though the trade mark was registered and had been for some years, it was still susceptible to be removed from the Trade Mark Register.  In this case, the “Persian Fetta” trade mark was not distinctive because, as the judge held, “other cheese makers in Iran, Australia, or elsewhere, trading or wishing to trade in Australia may want to use the word ‘Persia’ or ‘Persian’, on or in connection with fetta, either to signify the style of cheese or to indicate that their cheese comes from the region formerly known as Persia”.

The reason why “Persian Fetta” was able to be registered in the first place, despite it being subsequently removed, was because the applicants were, at the time, able to prove significant use and reputation in “Persian Fetta” and this was accepted by the Trade Marks Office. 

The lesson to be learnt is that any trade mark or brand chosen should be distinctive and avoid being descriptive. This is preferable to demonstrating reputation and use in the market in order to achieve registration.

Contact Details

Melbourne
Dan Pearce, Partner
T: +61 (0)3 9321 9840
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Sydney
Donna Bartlett, Partner
T: +61 (0)2 8083 0420
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Brisbane
Paul Venus, Partner
T: +61 (0)7 3135 0 613
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The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we
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