A Test for the "Test" of Distinctiveness - The Saga Continues...

Sarah Hinchliffe, Harvard Law School (Visiting Scholar); Boston University (School of Law); University of Melbourne (Department of Accounting, sarahah@unimelb.edu.au); Barrister and Solicitor (HCA, Vic), Australia & USA

A primary consideration prior to registering a mark for or on behalf of a client is whether it is “distinctive” as opposed to merely “descriptive”. In recent times, examiners in Australia appear to have become increasingly stringent about whether a mark is indeed “distinctive”. Take away points for practitioners: • An increased threshold for “distinctiveness” in Australia may be seen to encourage innovation as opposed to create a monopoly; • A “distinctive” mark is not the same as “well-known” mark; • Distinctiveness may arise in a registration context as well as in defensive actions.

Read full paper Subscribe to the IICJ
USA Intellectual Property General January 2013 Vol. 6, No. 22, Winter 2013

Sarah Hinchliffe

More

Sarah Hinchliffe is a Barrister and Solicitor of the High Court of Australia and Supreme Court of Victoria, and has practical experience in the area of taxation law having worked for the Australian Taxation Office and in private legal practice. Sarah has been the Director of a boutique law firm, Princeton Legal (Hinchliffe Legal), since 2010. In addition to her work and engagement in the legal profession, Sarah is a Teaching Fellow (Teaching Specialist) in Taxation at the University of Melbourne. Sarah teaches in the postgraduate Masters program and has also taught at a postgraduate level at Monash University, Victoria University and for the Taxation Institute of Australia. Sarah is an Associate member of the Law Institute of Victoria and of the Taxation Institute of Australia. She is also a member of the Taxation and Revenue Committee and the Intellectual Property and Information Technology Committee at the Law Institute of Victoria. Sarah has been an external editor for the Law Institute Journal and she has been engaged by the Productivity Commission as a consultant. Her research interests are primarily in the areas of taxation law and intellectual property. In relation to the former, direct taxation, taxation compliance and international taxation; and in relation to the latter, Chinese, Canadian, European and American intellectual property law. Sarah has published in these respective areas, and she has also delivered seminars in the area of taxation (including USA, UK and Australian taxation laws) as part of the Asian Institute of International Financial Law seminar program at the University of Hong Kong.

Harvard Law School, Universities of Boston and of Melbourne

More

USA Intellectual Property General January 2013 Vol. 6, No. 22, Winter 2013