What Cannot Be Trade Marked?

by LegalVision - Talia Admiraal

Protecting a new brand or product with a trade mark is a high priority for all businesses. Developing a name which suits you best requires a lot of work, including determining your marketing strategy, ensuring no other traders are using your name and creating one that is unique. Equally important is ensuring your new name is something you can trade mark in Australia. This article will explore some of the common elements of a word or logo that cannot be trade marked.

What is a Trade Mark?

A trade mark is a word or logo, sometimes a smell or sound, that is a way for consumers to identify a business’ goods or services. Registering a trade mark provides  legal protection of the unique identifier and allows you to enforce the exclusivity of your mark, especially if others are using it without your consent.

Intellectual Property (IP) Australia is the governing body for all Australian trade marks. It is an independent third party which examines trade mark applications. There are some clear, and some less clear, general rules, laws and common practices which govern how IP Australia examines trade mark applications and on what grounds it accepts or rejects applications. If IP Australia rejects a trade mark application, there may be options to overcome the rejection, depending on each individual circumstance.

Marks Which Are Descriptive or Not Distinctive

If you are seeking to register a mark which is not capable of distinguishing your goods and services from those of your competitors, IP Australia will probably object to your application.

For example, IP Australia would probably reject a mark for ‘Sydney Computers’ because it describes the location and goods. IP Australia also commonly objects to marks which contain praise words such as ‘Best’ or ‘Perfect’.

The best trade marks are distinctive and usually unique, with no connection to the goods and services. Some examples are ‘Apple’ and ‘Google’ which do not describe the goods and services each company provides and are extremely distinctive.

You can sometimes overcome a distinctiveness objection if you have been trading for a significantly long period and have built a reputation with the descriptive branding.

Marks that Conflict With Other Marks

IP Australia will also object to your trade mark if it is substantially identical or deceptively similar to an existing mark for the same classes of goods or services.

You may be able to overcome this objection by seeking consent from the owners of the existing marks.

Marks That Contains Signs That Cannot be Registered

IP Australia will reject an application if it contains a sign that is prohibited, such as:

  • a patent;
  • the registered sign, including ®;
  • the Commonwealth Coat of Arms;
  • the Australian flag;
  • Olympic rings; and
  • international flags (where their use is likely to cause confusion about the origin of the goods or services).

IP Australia rejects marks that use these signs because it is likely they would deceive or confuse the public. Federal government agencies and courts use the Commonwealth Coat of Arms, for instance. If businesses use it without permission, they could be breaching several laws.

IP Australia will also reject a trade mark application if it includes the ® symbol, since it suggests rights which are not yet granted. Often, removing the prohibited sign or word will remove the objection and mean the application can proceed.

Marks Which Are Scandalous or Contrary to Law

IP Australia can also reject marks which are scandalous or contrary to law. As the world continues to change and evolve, so does the interpretation of marks and the connotations of words. Something which may once have been offensive may no longer be and vice versa. These are all important considerations for IP Australia examiners when determining an application.

Scandalous

The examiners must determine whether the mark is likely to cause offence to the general public. Only a proportion of Australians need to be offended by the mark. Unfortunately, there is no clear guidance as to what the examiner can and cannot find scandalous, although the scandalous element needs to be obvious within the mark.

In addition, there are some applications that will be rejected regardless of the general public perception, for example, where there are marks contain religious intolerance or personal or ethnic abuse.

Profanities can also be scandalous, depending on the way in which the particular profanity is used within the mark. Obvious phonetic equivalents to a profanity are likely to be rejected. However, if the mark is somewhat phonetically similar, but used in a way in which the profanity is modified by humour, it is more likely to be approved.

An example of a profanity with phonetic equivalence is ‘Fuct’. An example of modification by humour is ‘Dr Phuq’. The first example was deemed offensive, while the second was acceptable through its idiosyncratic spelling and modification.

Similarly, any words or images that seek to depict or incite violence, terrorism or racism will probably be scandalous. However, the violence, terrorism or racism needs to be obvious within the mark for it to be rejected.

Contrary to Law

A trade mark will also be rejected for being contrary to law where the mark contains a sign which:

  • is protected under legislation; or
  • has been deemed illegal by a court.

A commonly rejected mark, especially in relation to healthcare, is either a red cross on a white or silver background, or a white or silver cross on a red background.

The word ANZAC is also protected. Additionally, you cannot use the Australian Made or Grown labels without consent.

Marks Which Are Likely to Deceive or Cause Confusion

If a mark contains a term or sign that is likely to deceive or cause confusion among consumers, the IP Australia examiner must reject the application.

For example, if the trade mark included “made in Australia” but the products were not manufactured in Australia, this would be deceiving.

Key Takeaways

Registering a trade mark in Australia can seem like a complicated process. There are many important considerations when applying for a mark, in order to ensure your application will be successful. Developing a brand which is unique to your business provides you with the best chances of successful registration both in Australia and internationally.



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