Elise Explains IPcast

Many of the world’s most memorable brands are built around short phrases.

Think “Just Do It”, “Because You’re Worth It”, or “I’m Lovin’ It.”

But can businesses actually protect slogans and taglines as trade marks?

In this episode of Elise Explains IP, Elise unpacks how trade mark law treats slogans, why many applications fail, and what businesses should consider before investing heavily in a tagline.

While slogans can become powerful brand assets, they are not automatically registrable. The key issue is whether the phrase functions as a distinctive brand identifier, rather than just advertising language.

We explore:

Why slogans can become valuable intellectual property

The legal test for distinctiveness under trade mark law

Why many marketing phrases fail to qualify for protection

The difference between advertising copy and trade mark use

Examples of well-known slogans that function as trade marks

Practical considerations for businesses developing taglines

Not all slogans can be protected.

Distinctiveness is critical.

Descriptive phrases are difficult to register.

Consistent use can build protection over time.

Strategic branding helps.

Examples of slogans that function as trade marks include:

Nike – “Just Do It”

L’Oréal – “Because You’re Worth It”

McDonald’s – “I’m Lovin’ It”

Red Bull – “Red Bull Gives You Wings”

These phrases work because they are memorable, distinctive, and strongly associated with a single brand.

A slogan can become one of the most recognisable elements of a brand.

But if it isn’t capable of trade mark protection, competitors may be able to use similar phrases.

Understanding how trade mark law treats slogans helps businesses:

Invest in branding that can actually be protected

Avoid adopting phrases that are too descriptive

Build long-term brand value through distinctive messaging

IP Australia – Trade Marks Overview

Trade Marks Act 1995 (Cth)

My website

https://elisesteegstra.com 

Elise Explains IP breaks down intellectual property in practical, plain-English terms for business owners, professionals, and advisors.

Each episode explores how IP works in the real world — and how businesses can use it strategically to protect brand value.

In this episode of Elise Explains IP, we explore how packaging shapes and colours can function as trade marks under Australian law. We break down the legal test for non-traditional marks, why distinctiveness matters, how functionality can undermine protection, and what evidence you need if you’re building these kinds of brand assets. We also unpack a major recent dispute over the Moccona coffee jar and what it tells business owners about enforcing shape trade marks in practice.

A “sign” under Australian trade mark law can include words, shapes, colours and packaging, so long as it can function as a badge of origin — meaning consumers recognise it as identifying one trader’s goods or services over others.

A shape or container can be registered as a trade mark if it’s distinctive and non-functional.

Functional features (e.g. those that improve handling, storage or manufacture) generally cannot be monopolised under trade mark law.

Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277

Moccona’s glass instant coffee jar shape was registered as a trade mark (Class 30 for coffee and instant coffee).

The Federal Court dismissed Moccona’s claim that Cantarella’s (Vittoria) similar jar infringed the shape mark, finding that use of that jar shape in advertisements did not amount to use as a trade mark and that key factors pointed away from consumer confusion.

The court also rejected Cantarella’s cross-claim to cancel the mark, holding that Moccona’s extensive use of the shape before the priority date had given it acquired distinctiveness under the Trade Marks Act.

Why this matters for business owners:

Colour can be registered if it functions as a trade mark and distinguishes your goods/services.

A classic international example is Tiffany & Co’s Tiffany Blue (registered in the U.S. for jewellery and packaging), showing how colour can serve as a badge of origin when strongly associated with a brand.

The disputes over Cadbury’s attempt to register a specific shade of purple illustrate key principles for colour marks:

Colour must be precisely defined and shown to function as brand identifier, not mere decoration.

A mark — whether shape or colour — must be recognised by consumers as identifying the source of goods or services.

If a shape is dictated by technical or functional necessity, registration is unlikely. Trade marks protect brand signals, not engineering features.

Registration gains force only when the mark is actually used in the marketplace in ways that signal origin.

Here are links and references to the legal decisions and authoritative sources we discussed:

Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 – Moccona coffee jar shape trade mark dispute (Federal Court of Australia) AustLii Case Decision

Australian Trade Marks Act 1995 (Cth) – Defines eligible trade marks, including non-traditional marks (shapes, colours, packaging). (See also IP Australia guidance on colour trade marks) Trade Marks Act

Shape and colour can be trade marks, but they must do real work in the marketplace as badges of origin.

Evidence matters: Consistent use over time builds distinctiveness.

Registration ≠ enforcement: Winning in court often hinges on how consumers actually perceive and use the brand elements in everyday purchasing decisions.

IP Australia manuals and guidelines on trade mark registrability

Case summaries from IP practice firms

Trade mark search and monitoring tools

What happens when a global brand expands into a new country… and discovers it doesn’t legally own its own name there?

In this episode, Elise breaks down the famous Australian branding anomaly behind Burger King and Hungry Jack's, and explains why this story is more than just business trivia — it’s a powerful lesson in trade mark strategy.

If you’re planning to grow your brand beyond your current market, this is essential listening.

Why trade marks are territorial and don’t automatically travel with your business

How filing timing can determine who legally owns a brand name

The real commercial costs of rebranding in a new market

Why trade mark planning should happen before expansion, not after

How this case still affects branding in Australia today

When Burger King attempted to enter Australia in the 1970s, it discovered the name was already registered locally.

Rather than abandon the expansion, franchise partner Jack Cowin launched the business under an alternative name: Hungry Jack’s.

Same burgers.

Decades later, Australians still don’t visit Burger King — they visit Hungry Jack’s.

This case illustrates three core trade mark realities:

1. Your brand only exists legally where it’s protected

2. Delay can cost you your name

3. Rebranding is expensive and disruptive

Before expanding internationally:

Identify target markets early

Conduct proper clearance searches

File trade marks proactively

Align filings with your expansion timeline

Trade marks aren’t just defensive tools — they’re infrastructure for growth.

About Elise Explains IP

A practical podcast helping business owners understand intellectual property in plain English — with real-world examples, legal insights, and strategies you can actually use.

Trade marks don’t travel.

In this episode of Elise Explains IP, Elise breaks down the practical realities of international trade mark protection — when you need it, how to approach it, and what can go wrong if you delay.

From manufacturing risks to eCommerce expansion, this episode explains why global business requires a global brand strategy.

Why trade marks are territorial

Manufacturing risks in first-to-file jurisdictions

Real-world disputes

These cases illustrate a key lesson: reputation does not equal ownership.

Expansion risks

Marketplace takedowns

Customs blocks

Licensing demands

Rebranding costs

The eCommerce trap

Two international filing pathways explained

• Convention applications — separate filings in each country within 6 months of your Australian filing, offering independence and flexibility.

• Madrid Protocol applications through the World Intellectual Property Organization — streamlined international filing with central management, but exposure to “central attack” risk during the first five years.

You should be considering overseas protection if:

You manufacture offshore

You plan to expand internationally within 12 months

You operate borderless eCommerce

Investors are reviewing your IP position

Your brand is central to business value

International trade marks aren’t about prestige — they’re about risk management.

Filing early in key jurisdictions can protect:

Your supply chain

Your market access

Your brand value

Your scalability

Because reclaiming a brand once someone else owns it overseas is far more expensive than protecting it early.

This podcast provides general information only and does not constitute legal advice.

Choosing a business name is exciting.

Choosing a protectable business name? That’s strategic.

In this episode of Elise Explains IP, we break down what actually makes a trade mark strong — and why most trade mark issues start at the naming stage, not at registration.

If you're launching a new business, rebranding, or advising clients on brand strategy, this episode walks through the practical legal considerations that can save time, money, and stress down the track.

Trade marks sit on a spectrum — from highly distinctive (and easy to protect) to generic (and impossible to register).

The strength of your trade mark affects:

How easy it is to register

How broad your protection will be

How enforceable it is

The long-term value of your brand

We walk through the hierarchy of trade marks, from strongest to weakest:

Fanciful / Invented Marks

Arbitrary Marks

Suggestive Marks

Descriptive Marks

Generic Terms

Choosing a name that “sounds safe” but is legally weak

Falling in love with a brand before conducting searches

Designing logos and buying domains before checking availability

Assuming registration automatically guarantees broad protection

When naming your business, aim to:

Choose invented, arbitrary, or suggestive names

Avoid directly describing your goods or services

Be cautious with geographic terms

Think about future expansion

Conduct clearance searches early

Get advice before committing to brand rollout

If your name immediately tells people exactly what you do, it may be great for marketing — but weak for trade mark protection.

Distinctiveness drives registrability.

The strongest trade marks often feel slightly abstract at first — but that’s precisely what gives them power.

Start-ups choosing a business name

Established businesses considering a rebrand

Accountants, lawyers, and advisors guiding clients

Marketing professionals collaborating with legal teams

In this episode of Elise Explains IP, we dig deeper into the long-running ORO trade mark saga — this time through the lens of the Federal Court case Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258. Rather than overturn the earlier High Court decision, this judgment demonstrates another way the enforceability of a foreign-word trade mark can be defeated.

1. Background of the Dispute

2. Was Lavazza Using ORO as a Trade Mark?

3. The High Court’s Earlier Ruling

4. Ownership and First Use Are Fatal

5. Invalidity and Cancellation

6. Broader Legal Themes

Ownership matters as much as distinctiveness — valid registration doesn’t guarantee enforceability if first use is challenged.

Unregistered use can be decisive — evidence of earlier use by others may invalidate a registered mark.

Trade mark enforcement isn’t just about distinctiveness — ownership and priority can make or break a case.

Comprehensive due-diligence and historical use research are essential before you register and before you litigate.

Keeping systematic records of use from first commercial use strengthens your rights and helps preserve enforceability years later.

Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48

Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258

Episode Title:

Judgment Link:

In January 2023, Getty Images sued Stability AI in the UK High Court over alleged copyright and trade mark infringement by Stability’s image-generation model, Stable Diffusion. Getty claimed the AI was trained on millions of Getty’s licensed images without permission and could produce outputs reproducing Getty’s watermarks or marks.

Primary Copyright Infringement (Training & Development)

Secondary Copyright Infringement

Trade Mark Infringement

Passing Off and Other Claims

Copyright Implications:

The Court confirmed that model parameters are not a “copy” of training content under UK law, an important signal for developers.

The judgment does not resolve the global question of whether training on copyrighted material without permission is infringement in a jurisdiction where the training occurs.

Trade Mark Implications:

Outputs that reproduce watermarks or marks under commercial conditions can trigger trade mark liability. Monitoring and filtering model outputs is therefore key.

Although this is a UK judgment, many principles will be of interest in New South Wales, Victoria, and federal Australian practice:

Territoriality: Australian copyright, like UK law, operates on territorial principles. Activities outside Australia may not attract infringement claims locally.

Model Weights & Copies: Australian courts have not yet ruled on whether AI model weights constitute copying; the UK approach may be influential but not binding.

Trade Marks & Outputs: Australian trade mark law will also apply to outputs that can cause confusion in the marketplace; watermark issues remain relevant.

Contractual Protection: Clear licences and contractual controls over datasets remain crucial for rights-holders.

Developer Practices: Documentation, filtering regimes, and auditable data provenance help manage risk.

For Rights-Holders:

Track where models are trained and deployed.

Watermark or brand-protect where possible.

Use clear terms in licences and contracts.

For AI Developers:

Maintain robust filtering and monitoring for generated outputs.

Document training sources and locations carefully.

Understand jurisdictional exposure, especially where services are offered globally.

Full Judgment: Getty Images (US) Inc & Ors v Stability AI Ltd – November 4, 2025 (UK High Court) – https://www.judiciary.uk/wp-content/uploads/2025/11/Getty-Images-v-Stability-AI.pdf

Episode summary

Aldi is no stranger to headlines for its lookalike products — often called “dupes”. But when does copying cross the legal line from legitimate competition into intellectual property infringement?

In this episode of Elise Explains IP, Elise unpacks the legal risks behind dupe culture and explains how courts in Australia and the UK are responding. Using two recent and high-profile decisions — Hampden Holdings I.P. Pty Ltd v Aldi Foods Pty Ltd in Australia and the Thatchers v Aldi case in the UK — Elise explores how copyright and trade mark law can be used to protect brand owners against copycat packaging.

This episode is essential listening for brand owners, founders, marketers, and anyone developing or launching consumer products.

What a “dupe” actually is — and why they are legally controversial

Aldi’s long-running strategy of lookalike products

Why Australian courts often reject trade mark confusion arguments

How copyright in packaging design can succeed where trade marks fail

The Federal Court’s findings in Hampden Holdings I.P. Pty Ltd v Aldi Foods Pty Ltd [2024] FCA 1452

What “substantial part” means in copyright infringement

Why Aldi was ordered to pay additional damages

The UK decision in Thatchers Cider Company Ltd v Aldi Stores Ltd

How “unfair advantage” works in trade mark law — even without confusion

Practical IP lessons for businesses navigating competitive markets

You do not need identical branding for infringement — overall impression matters

Copyright can be a powerful and under-used weapon against copycat packaging

Intent and internal design instructions can be critical evidence

Trade mark law increasingly focuses on unfair advantage, not just consumer confusion

A layered IP strategy is essential for brands vulnerable to imitation

Hampden Holdings I.P. Pty Ltd v Aldi Foods Pty Ltd [2024] FCA 1452

Thatchers Cider Company Ltd v Aldi Stores Ltd (UK Court of Appeal)

Brand owners and founders

FMCG and retail businesses

Marketing and product teams

Designers and creative agencies

In-house counsel and legal advisors

Anyone curious about how far “inspiration” can legally go

Elise Explains IP breaks down intellectual property law into practical, real-world insights for business owners and professionals. No jargon. No fluff. Just clear explanations of how IP law works — and how to use it.

In this episode of Elise Explains IP, Elise breaks down how foreign words are treated under Australian trade mark law, and whether they can be considered descriptive — potentially undermining distinctiveness. We walk through the legal framework, practical examples, and what brand owners need to know when choosing and protecting trade marks that use words from another language.

Trade mark distinctiveness in Australia: All marks — including foreign words — must be capable of distinguishing your goods or services from others.

Ordinary Australian consumer test: A foreign word may be treated as descriptive if Australian consumers — or a relevant segment of the public — understand its meaning and see it as referring to the goods or services.

When foreign words may still qualify: Words that are obscure, not widely understood, or arbitrary in context can be registrable.

Brand strategy implications: Descriptive marks are hard to enforce and protect — early clearance and strategy are critical.

Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48

Full judgment:

If a foreign word is understood in Australia as simply describing a quality or characteristic of goods and services, it may be considered descriptive — which can lead to refusal of registration or vulnerability to cancellation. This episode helps you navigate these issues with examples, legal context, and strategic insights.

Trade mark clearance & strategy guidance

IP Audit Tool (link available via the show page)

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.

Brand Clearance and IP Strategy Support

IP Audit Tool

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Website: https://elisesteegstra.com