By Renai LeMay
Monday, September 19 2005 09:42 AM
URL: http://www.zdnetasia.com/news/software/0,39044164,39255467,00.htm

An attempt by Australia's peak Linux body to register the name "Linux" on behalf of Linus Torvalds has failed.

The application was turned down by Intellectual Property Australia, a federal regulatory agency, because the word "Linux" was not seen as distinctive enough to be trademarked.

The registration would have prevented companies from claiming the name as their own, but would have allowed them to use it commercially if they paid royalties to the Linux Mark Institute, a global body established by Torvalds, creator of the open-source operating system.

The move apparently had been initiated by Linux Australia, an open-source advocacy group, as part of a bid to stop local companies from trying to trademark the word "Linux." The group was motivated by a desire to protect its own name after an Australian company sought its own trademark. Linux Australia went to Torvalds in August 2004 to ask for his help.

But the move has been rejected. IP Australia's decision was detailed in an Aug. 31 letter to Jeremy Malcolm, an attorney who represents Torvalds.

"For your client's trademark to be registerable under the Trade Marks Act, it must have sufficient 'inherent adaptation to distinguish in the marketplace," said the letter, which was apparently written by Andrew Paul Lowe, who's named on the document as the examiner. "In other words, it cannot be a term that other traders with similar goods and services would need to use in the ordinary course of trade."

However, as IP Australia found, it was highly likely that other traders would also need to use the word "Linux." (Click here for a PDF of the letter.)

The letter also called into question Malcolm's right to speak for Torvalds in providing evidence to support the application.

"It is not clear from the declaration in what way Mr. Jeremy Malcolm is authorized and qualified to make this declaration on behalf of Mr. Linus Torvalds," the regulator said.

In the letter, IP Australia also dismissed what apparently were attempts to back up the trademark claim with excerpts from Google searches and Wikipedia.

"The entry from the Wikipedia encyclopaedia indicates 'Linux is a computer operating system and its kernel'...demonstrating generic use rather than trademark use," IP Australia said in part. "Additionally, the Google searches provided simply show that the word 'Linux' is a frequently used term on the Internet, and do not demonstrate trademark usage."

The regulator also rejected the application on the basis that "Linux" is similar to existing trademarks owned locally--for example, 'LinuxWorld' is owned by publisher IDG--and that consumers could subsequently be led to believe that services around such marks were provided by the same organization.

Malcolm declined to comment on the decision, citing the need to consult with his client.

IP Australia initially set Sept. 7 as the deadline for further submissions, but this has been extended.

Jonathan Oxer, president of Linux Australia, told ZDNet Australia the organization would seek its members' advice on whether to proceed with the application and bear the cost of $100 per month payable to IP Australia.

Oxer said the Linux Australia executive committee was in favor of continuing with the process, although there might be a "fairly low chance of success."

But ultimately, the rejection could be just what the doctor ordered.

"My understanding is that if Linux Australia can't register...('Linux') as a trademark, then nobody else could either," Oxer said.

"Our goal was to make sure the name is used in a reasonable way. If it's not possible (for anyone else) to register it as a trademark, then that has to some extent been achieved."

Linux Australia's other aim was to prevent the name 'Linux' from being used inaccurately, and the organization was considering asking IP Australia to provide a written statement that there was no chance of any other organization registering the trademark.