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.

Read the full case:

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.

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Website: https://elisesteegstra.com