Bauer Media attempts to trademark the word ‘glossy’

Australian publishers could soon be prevented from using the word “glossy” to describe their publications if an attempt to trademark the term by Bauer Media is successful.

Mumbrella reports the German publishing giant, which publishes Australian women’s magazines Cosmopolitan, Australian Women’s Weekly and Elle, has applied for a trademark in Australia for the term “glossy” in two classifications which cover print and online publishing.

Classification 16 includes magazine and periodical publishing, while classification 41 covers publishing, competitions, entertainment and cultural services, production of television and radio shows, interactive games services and “publication of information on global computer networks including the internet”.

According to the Trade Mark Watch blog, the application was lodged on May 1 and is subject to approval.

SmartCompany contacted Bauer Media for comment but did not receive a response prior to publication.

This is not the first time the publisher has applied for the “glossy” trademark, following several applications by ACP magazines, which was acquired by Bauer in 2012, between 2007 and 2009.

ACP magazines registered the “glossy” trademark under the same classifications in 2012, but it was not added to the trademark register and subsequently lapsed.

K&L Gates partner Jane Owen told SmartCompany she expects the application will “fall down at the first hurdle” in relation to printed materials as the word “glossy” is “inherently descriptive”.

“It’s one step removed from trying to register the word ‘magazine’” Owen says, pointing out IP Australia will not give a business a monopoly over a trademark in a situation where “other traders ought to be able to use the word in the normal course of trade”.

Owen says businesses and individuals in Australia can apply for trademarks and the applications are reviewed by IP Australia, which compares the application with the trademarks already registered in Australia for similar goods and services to see if the trademark is distinctive.

Failing these tests, Owen says the applicant must show substantial evidence that it is already using the term.

Finlaysons intellectual property, media and technology partner John MacPhail agreed, telling SmartCompany he would be “extremely surprised” if the application was successful.

“The test is quite plain and simple,” MacPhail says. “Would people when they see the word glossy make the unique connection with Bauer? The answer is no.”