Restricted Words to Avoid When Applying for a Trade Mark
George Raptis
Before applying for a registered trade mark, it is important to consider whether the trade mark you have in mind is actually registerable. Under the Trade Marks Act, trade marks have to satisfy certain criteria in order for IP Australia to approve them. To limit the chances of IP Australia rejecting your trade mark application, this article outlines restricted words and terms to avoid when applying for a trade mark and measures you can take to ensure that your trade mark is likely accepted.
Avoid Ordinary Descriptions
A trade mark must be capable of distinguishing your goods and services from others in the market. If your trade mark uses terms that ordinarily describe your goods and services, either concerning their function or quality, it would likely be difficult to register as a trade mark.
For example, the word ‘clean’ concerning house-cleaning products or the word ‘refreshing’ concerning a soft drink are common words that describe these products.
Commonly used phrases to describe goods can also be difficult to trade mark. For example, the phrase ‘eco friendly’ for recyclable products would be difficult to trade mark. Common abbreviations or acronyms can also be difficult to register, such as ‘HD’ for tech goods or ‘4×4’ for vehicles.
Avoid Common Surnames
Since businesses regularly trade in their owner’s name, business owners often seek to trade mark their business name. However, common surnames such as ‘Smith’ or ‘Jones’ are unlikely to be approved on the basis that others who also share their name may have a legitimate interest in using it for their own goods and services.
Avoid Geographical Names
Similar to common surnames, geographical names are difficult to register, given others likely have a legitimate interest in using them for their own goods and services. This is particularly true if a geographical region is known for a particular industry, such as the wine industry in the Hunter Valley region of NSW.
Avoid Scandalous Material
IP Australia can also reject a trade mark application if it comprises scandalous material. There is no strict definition of what falls within the meaning ‘scandalous material’. However, it generally includes:
- innuendos;
- words that are profane, racist or blasphemous; and
- words inciting violence or criminal activity.
Avoid Words Related to Banking and Financial Services
If you are registering a financial service trade mark under trade mark class 36, there are limitations on words you can use to describe your financial, insurance and banking services. For example, a person carrying on a financial business cannot use words such as ‘authorised deposit-taking institution (ADI),’ ‘bank,’ ‘banker,’ ‘banking,’ ‘building society,’ ‘credit union,’ and ‘credit society’ concerning their financial services. The Australian Prudential Regulatory Authority (APRA) must grant you permission if you wish to use these words concerning financial services.
Avoid Signs Prohibited by the Paris Convention
Under the Paris Convention for the Protection of Industrial Property, member states have agreed to protect certain signs such as flags, emblems, official signs, and abbreviations or names of international intergovernmental organisations. Since Australia is a signatory to the Convention, it is unlikely that IP Australia will accept a trade mark that comprises these prohibited features.
Methods to Check Whether Your Trade Mark Is Likely to be Accepted
There is no guarantee that IP Australia will accept your trade mark application. However, there are ways of checking the registrability of your trade mark before you file your application.
1. Take IP Australia’s Survey
IP Australia has helpfully created a survey comprising several ‘yes’ or ‘no’ questions to test whether your trade mark is likely registrable. Whilst it does not verify your trade mark specifically, it provides a helpful guideline when deciding what you will trade mark. You can find the survey here.
2. Use a TM Headstart Application
IP Australia gives you a variety of ways to apply for a trade mark, including a TM Headstart application. A TM Headstart application involves a specialist assessing your trade mark application before you file it with IP Australia. The specialist can point out any deficiencies in your application in a timely manner and allow you to make amendments to your application before you file it.
3. Consult a Trade Mark Lawyer
A lawyer specialising in trade marks can also advise you on the strength of your trade mark application. They can ensure that it meets all the requirements necessary for a successful application.
Key Takeaways
Before applying for a registered trade mark, you should be aware of certain words that are difficult to register. Generally, ordinary words used to describe the nature or quality of products are unregistrable. The same goes for ordinary surnames, geographical areas, and any scandalous material. If you require further legal assistance with applying for a trade mark, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
When thinking about applying for a trade mark, it is best to do so earlier rather than later. This is to ensure that your brand is adequately protected as early as possible. It also allows you to make provisions for any unforeseeable delays.
The cost for a TM Headstart application starts at $330. This is compared to the cost of a standard application which starts at $250. However, a TM Headstart application provides you with more services that a standard application does not.