In this episode of Elise Explains IP, host Elise Steegstra breaks down a core concept in trade mark law: distinctiveness. Understanding whether a trade mark is distinctive — and at what level — can mean the difference between strong legal protection and a trade mark that’s vulnerable or unregistrable.
Elise explains:
What distinctiveness means in trade mark law
The spectrum of distinctiveness, from weak (descriptive) to strong (invented) marks
Why descriptive marks are problematic and how they differ from suggestive, arbitrary, or invented marks
The limits of logo protection when the underlying name is weak
Practical guidance on building distinctive brands that are legally protectable
The episode also includes a real-world case study: The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203, which illustrates how the court assessed distinctiveness — and why reputation alone was not enough to secure exclusive rights.
Case Reference
Read the full case:
The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203
https://jade.io/article/1058589
Key Takeaways
A trade mark must be distinctive to perform its legal role as a badge of origin.
Descriptive marks are the weakest and often cannot be registered unless substantial evidence shows they have acquired distinctiveness.
Suggestive, arbitrary, and invented marks are stronger and generally more protectable.
A logo does not automatically fix a weak name; word marks usually carry the most value.
Assess distinctiveness in context: the specific goods/services and how ordinary consumers perceive the mark.
The "The Agency" case demonstrates that even well-known brands can fail to secure exclusive rights where descriptive terms are central to the name.
Resources & Tools
Brand Clearance and IP Strategy Support
If you’re planning a new brand, contemplating a rebrand, or unsure about your trade marks strength, we can help. Book a trade mark clearance or strategy call through our website.
IP Audit Tool
Kick off the new year by evaluating your intellectual property landscape with our downloadable audit tool. Identify gaps, risks, and opportunities across trade marks, copyright, domains, and more.
Connect with Elise
Website: https://elisesteegstra.com
Instagram: @elisesteegstra
LinkedIn: linkedin/elisesteegstra
Email: elisesteegstra@gmail.com