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A Test for the 'test' of Distinctiveness - The Saga Continues...

January 2013
Intellectual PropertyGeneral

Abstract

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.

Author

Portrait image of Sarah Hinchliffe
Sarah Hinchliffe
Barrister and Solicitor (HCA, Vic), The College of William and Mary, USA

Sarah 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.

Company

The College of William and Mary

The College of William and Mary, Mason School of Business: The Mason School of Business can lay claim to the spirit of revolution and take up the business of rebuilding the global economy by training the next generation of principled business leaders who will imagine the great business opportunities of the day and seize them. The entrepreneurial spirit that is the cornerstone of American business is as alive and as important as ever and lives on at the Mason School of Business.

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