Should the Australian Distinctiveness Test Focus More on Consumer Perception? Lessons from Geographical Trade Marks

In this article we explore the nature of the test of distinctiveness in Australian trade marks law by reference to its application in geographical trade mark cases. A 'geographical trademark' is a registered standard mark that contains a geographical term with or without other elements, irrespective of whether that term is a registered geographical indication. We compare the Australian approach with the United States and European Union law and practice. We find that Australia has historically been at odds with those jurisdictions. We conclude that despite Cantarella, inconsistencies and uncertainty remain in the application of the distinctiveness test. We suggest that a more consumer-perception focused approach could improve consistency and clarity of the test, as well as aligning Australian law with the United States and the European Union.