Falling in love with your brand name (and why the law doesn’t always agree)

Falling in love with your brand name (and why the law doesn’t always agree)

Sub heading – Distinctive vs Descriptive: Naming Your Brand the Smart Way

You’ve done it again.
You’ve fallen for a name.

Maybe it arrived on a sticky note in a café, or during a late‑night “what if we called it…” conversation. It feels clever, it fits your story, and you can already picture it on packaging and social media.

Then the practical voice kicks in: “Can we register this as a trade mark in Australia?” or “Is this brand name distinctive enough under Australian trade mark law?”

This blog is for that exact moment. It explains what distinctiveness really means in Australian trade mark law, why IP Australia is wary of descriptive trade marks, and how to pick (or tweak) a brand so it has a much better chance of trade mark registration – and long‑term protection.

What is trade mark distinctiveness?

A trade mark is distinctive when it helps people recognise that what they’re buying comes from you and not someone else. The more distinctive the brand name or logo, the easier it usually is to register and protect your trade mark in Australia.

Australian law calls this being “inherently adapted to distinguish”, which really just asks: does your word, logo or phrase naturally act like a badge of origin for your business, or is it the kind of wording other traders would reasonably want to use because it describes what they sell?​

IP Australia gives simple examples:

• Descriptive terms such as “STRAWBERRY” for drinks or “WARM” for heaters are weak because they describe a feature.
• Highly distinctive marks like invented words or ordinary words used in an unrelated way (for example, “APPLE” for computers) are usually much stronger.

Distinctive vs descriptive

Think of trade marks as sitting on a sliding scale:

• Generic – the actual product name, like “COFFEE” for coffee. These can’t function as trade marks.
• Purely descriptive – directly describe quality, purpose, place or kind, for example “SYDNEY BUS TOURS” for tour services. Hard to register, unless you have exceptional evidence of use.
• Suggestive / allusive – hint at qualities without spelling them out, like “JAGUAR” for cars. Often registrable as trade marks.
• Arbitrary – common words used in an unrelated field, like “APPLE” for tech. Usually strong.
• Invented / coined – made‑up words like “SPOTIFY”, “SMIGGLE”, “KODAK” or “MICROSOFT”. These are generally the strongest marks.

Most problems arise when a name sits too close to the descriptive end. IP Australia often raises “distinctiveness” objections where a mark directly describes what you sell, contains common marketing fluff (“DELUXE”, “PREMIUM”), or uses everyday industry terms.

Why IP Australia is so tough on descriptive marks

It’s not because examiners dislike your brand idea. It’s because the law says other traders must be free to use ordinary descriptive language.​

If one business could monopolise “FRESH ORGANIC APPLES” or “FAST ONLINE TAX RETURNS”, competitors would struggle to explain their own services.

A distinctiveness objection is really about keeping the playing field fair, while still rewarding truly distinctive branding under Australian trade mark law.​

Commentators sometimes have summed it up this:

“The more your mark describes what you do, the less it can distinguish who you are.”

Can a descriptive name ever be registered?

The idea that a “descriptive” name might still be registered can sound tempting, but it immediately raises more questions than answers:

What would it take for ordinary words to pick up a second, brand‑specific meaning in the minds of your customers?

How long would you need to use the name, in how many places, and with what level of visibility before people stopped seeing it as a description and started seeing it as you?

And, crucially, how would you ever prove that to an IP Australia examiner who has never heard of your business before?

Australian law does recognise the idea of “acquired distinctiveness” or “secondary meaning”, where a non‑distinctive sign may be registrable if it has effectively become a brand through extensive use.​

There are real‑world examples to point to: ordinary words that, after years of consistent use and media attention, have come to identify a particular venue, or product shapes that the public now instinctively links with one company’s goods.​

But those are outliers, often backed by national marketing campaigns, high sales volumes and detailed evidence that journalists and consumers use the term as a name, not as shorthand for a product category.​

The obvious question for a smaller business is whether it makes sense to bet on becoming one of those rare cases. Is it realistic to gather the kind of sales data, media coverage and consistent trade mark‑style use that IP Australia looks for when assessing acquired distinctiveness? How much would it cost to assemble that material properly, and what happens if, after all that effort, the Office still considers your mark too descriptive to register?​

With decades of experience in trade marks and brand strategy, Sharon Givoni Consulting has seen both sides of this equation: situations where evidence of use has genuinely tipped the balance for a borderline mark, and others where clients have been better off stepping back and investing in a more distinctive new name instead. Rather than promising that evidence will “fix” a weak mark, the focus is on helping you weigh up the practical options: is this a case worth fighting, or is it time to redirect energy into creating a stronger, more protectable brand from the outset?

Conclusion: is your brand name distinctive enough?

Working out whether a brand name is “distinctive enough” is rarely as simple as ticking a box. It sits in that grey area where language, marketing and trade mark law in Australia collide. The questions that matter most often sound deceptively simple: does your name sound like a true badge of origin, or more like everyday language? Would your competitors naturally reach for the same words? If a stranger saw your name with no logo or context, would they think of a particular business, or just a type of product or service?​

Then there are the less obvious questions. How will an examiner at IP Australia view your name in light of previous decisions about descriptive, suggestive or invented words? Where does it sit on the spectrum between highly distinctive and almost generic?​

Are small tweaks in spelling or adding words like “online”, “group” or “solutions” really helping, or just dressing up language that is still fundamentally descriptive? And what about long‑term strategy: is this a name you can grow into, protect and enforce across Australia (and possibly overseas), or is it likely to run into objections, conflict with existing rights, or become hard to defend if others start using similar wording?​

At Sharon Givoni Consulting, this is exactly the kind of territory navigated every day.

With around 30 years’ experience in trade marks and brand protection in Australia, the team has seen how IP Australia applies distinctiveness tests in practice and how courts have treated borderline or descriptive marks over time. That background means they can look at a proposed name not just in the abstract, but against real‑world examples and decided cases: when have partly descriptive marks been rescued by strong use, when have they failed, and when has a modest tweak turned a risky idea into something much safer?​

Instead of handing you a one‑word “yes” or “no”, the focus is on raising the right questions with you: how important is this exact name to your brand story; what level of risk and cost are you comfortable with; do you want to build distinctiveness over time, or would a fresh, stronger name serve you better from day one?

Those conversations draw on IP Australia’s guidance, current examination practice and case law, but stay grounded in the commercial realities facing small‑to‑medium Australian businesses and creative brands.

FAQs – Distinctive trade marks in Australia

1. Why does my trade mark need to be distinctive?

Because the main job of a trade mark is to show where goods or services come from. If your mark just describes what you offer, it won’t reliably point consumers to you as the source.​

2. Can I register a purely descriptive brand name?

In most cases, no. IP Australia will usually refuse marks that directly describe your goods or services, unless you can prove very strong acquired distinctiveness.​

3. What are some signs my mark might be distinctive?

It doesn’t describe your product, it feels unusual for your industry, it’s an invented word, or an ordinary word used in an unexpected way.​

4. Is it enough to just misspell a descriptive word?

Usually not. Minor spelling tweaks or adding punctuation seldom turn a descriptive term into a distinctive trade mark.​

5. Should I file now or wait until I have more use?

If your mark is inherently distinctive, filing early is often wise. If it’s borderline descriptive and you have little use, it may be better to re‑name rather than rely on future evidence to “fix” it.

How Sharon Givoni Consulting can help

• Review and rate proposed brand names
• Advise how distinctive your marks are under Australian law
• Suggest safer, stronger options from a trade mark perspective
• Help you create more distinctive names and logos
• Work with your designers/marketers on brand strategy
• File and manage Australian and overseas trade mark applications
• Run searches and clear brands before you invest in them
• Handle examiner objections and responses
• Advise when to use evidence of use (and when not to)
• Assist with oppositions, infringements and brand enforcement
• Attend trade mark hearings
• Draft trade mark brand guidelines
• Draft trade mark licences and assignments

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Please note the above article is general in nature and does not constitute legal advice.

Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.