By Courtney Adamson

The term “limping trademark” was first coined by Justice Jacob in Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279 to describe a mark that was not capable of fulfilling the role of a trademark without further elements of a company’s branding. In this case, the mark in question was an image of the top portion of a Philips electric shaver. Jacob J found that the mark had never been used without the well-known PHILISHAVE trade mark or trusted to do the “job” of a trademark on its own.

It is frequently the case that a trademark’s “limp” will be fatal to its ability to be registered in Australia. This is due to the fact that it will not be considered to be “inherently adapted to distinguish” relevant goods or services in its own right (see section 41(3) of the Trade Marks Act 1995 (Cth)). However, if the relevant mark is considered to be “inherently adapted to distinguish” to a limited extent, it may be possible to obtain registration where evidence of use, intended use or any other circumstances can prove that the mark “does or will distinguish the designated goods or services…from the goods and services of other persons” (s. 41(5) of the Act).

Decisions by the Australian Courts and Trade Mark Office (ATMO) in 2014 and 2015 have considered what it might take for an applicant to obtain registration for a “limping trademark” under s. 41(5). It is worth noting that the task is not an easy one.

The sources of evidence that applicants have generally relied on for s. 41(5) is evidence of high sales of the product associated with the trademark, relevant advertising, as well as survey evidence proving broad recognition of the product in Australia.

Importantly, the Courts and ATMO have identified the following issues with evidence of this nature for “limping” marks:

  • evidence regarding the high sales and broad recognition of a product in Australia does not in fact prove that the trade mark simpliciter is capable of distinguishing the relevant goods
  • evidence of advertising may in fact prove that the trade mark has never been used without additional brand elements, or alternatively that the main features of a product do not form part of the mark
  • survey evidence that highlights consumer recognition of the association between a company and the depiction of the product does not necessarily indicate that consumers attribute trademark significance to the mark itself (as per its description).

In terms of survey evidence, it is also important to consider practical issues, such as the margin for error, the formality, scope and size of the survey, as well as the timing of a survey with the filing date of an application. See Accolade Wines Australia Ltd and Ors v Delegat’s Wine Estate Ltd 108 IPR 514 at [30].

Overall, the Courts and ATMO have indicated that even the most well-known brands with broadly recognised products in Australia will struggle to overcome the inherent deficiencies of a “limping trademark” that, in the words of Jacob J “…cannot really stand up on its own.”  It is insufficient to demonstrate that a mark distinguishes the relevant goods or services when viewed in combination with other elements of branding; it must function as a trademark in its own right. Applicants should keep this in mind when providing evidence of use, intended use or other circumstances for the purposes of satisfying s. 41(5) of the Act.