A trade mark cannot be registered in Australia if it is not capable of distinguishing the applicant’s goods or services from the goods or services of other traders.
Some trade marks consist of words or logos or other components which are completely unrelated to the goods or services being offered, and which other traders are unlikely to want to use. Such trade marks are considered inherently adapted to distinguish the goods or services, so they pass the “capable of distinguishing” test.
Other trade marks consist of words or logos or other components which other traders are likely to want to use, such as colours, or words which describe a characteristic of the goods or services such as the kind, quality, quantity, intended purpose, value or geographical origin. Such trade marks are considered not inherently adapted to distinguish the goods or services, so they do not pass the “capable of distinguishing” test unless the trade mark applicant can prove that, prior to applying for registration, the trade mark had been used so extensively and the trade mark had become so well known to members of the public that it does in fact distinguish the goods or services as being those of the applicant.
Other trade marks fall somewhere in between those which are inherently adapted to distinguish and those which are not inherently adapted to distinguish. Trade marks which are partly inherently adapted to distinguish will only pass the “capable of distinguishing” test if the applicant can prove that there has been or will be sufficient use or intended use of the trade mark before or after applying for registration.