Macquarie Dictionary and Distinctiveness
A recent decision of the Trade Marks Office on the distinctiveness of the trade mark ‘Cashcard’ for debit and credit cards reveals the potential importance of dictionary entries in the Macquarie Dictionary. Cashcard Australia Ltd [2007] ATMO 70 (8 November 2007) also demonstrates the well known proposition that extensive use of a trade mark does not necessarily equate to use generating distinctiveness of that trade mark.
The Macquarie Dictionary was first published more than 25 years ago and is the accepted dictionary of ‘Australian English’. The examiner of the application for registration of ‘Cashcard’ noted that the Macquarie Dictionary defined the word as ‘a card which allows one to perform certain banking activities via an automatic teller machine’. Yet the entry was a relatively recent entry and the 1987 edition of the Macquarie Dictionary, published some three years after initial use of the term by the applicant, did not have the one word ‘cashcard’ in it at all.
At the hearing, the Delegate declined to attribute any significance to either the existing entry in the Macquarie Dictionary or the absence of an entry in the 1987 edition as there was no evidence as to whether the current entry was the product of the applicant’s use of the term or the fact that it had entered the common language of Australian consumers by the joining of two common words with a clear connection.
The Delegate then proceeded to form the view that the trade mark lacked inherent distinctiveness for the purposes of s41(3) of the Act. While the Macquarie Dictionary was ultimately disregarded in that decision on the issue of inherent distinctiveness, the examiner’s comments and the decision itself reflect the potential importance of the Macquarie Dictionary and why every Australian trade mark practitioner needs a copy and access to previous editions.
The Delegate’s decision also went on to consider whether “Cashcard” had acquired sufficient distinctiveness through use to justify registration pursuant to s41(6) of the Act. The applicant attempted to make much of the fact that its ‘trade mark’ appeared on 22,000 Australian ATM machines. The Delegate was unimpressed, saying (at para 30):
"I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods."
Other evidence, including some surveys on distinctiveness which were contaminated by some leading questions, was rejected as demonstrating distinctiveness by use.
