Mistakes to Avoid When Applying to Register A Generic Word As A Trade Mark

George Raptis

• 2 August 2022
• 27 October 2022
• 5 min read

Your trade mark must distinguish your business’s goods and services from others if you intend to achieve instant registration. For this reason, IP Australia might reject a trademark application containing only a generic word or other generic elements. This is because the trade mark cannot distinguish the specified goods or services. To minimise your risk of rejection, you should:

• know what words IP Australia might consider generic;
• consider whether your trade mark is similar or identical to an existing trade mark; and
• select only the relevant classes to ensure you gain effective trade mark protection.
  

This article will explain the above in detail. 

1. What Would IP Australia Consider to be a Generic Word?

IP Australia is unlikely to accept a trade mark application that contains only generic words since it is likely that other traders in the industry would benefit from using them. For example, businesses in the recycling industry would all benefit from using the generic term ‘eco-friendly’ to describe their products and services.

Additionally, you may have difficulty registering a trade mark that contains a generic word or words that describe the: 

• quality; 
• intended use; 
• quantity; or 
• geographical location of your business’ goods and services. 

If this is the case, it is unlikely that your application will meet the requirements for acceptance unless you can demonstrate evidence of previous use. Some examples of trade marks that may be difficult to protect include:

• Parramatta Florists;
• Clean Teeth Dental Clinic; and
• Ultra White Paper.

Similarly, IP Australia is unlikely to accept an application for a trade mark containing a common given name. For example, common names like ‘Sam’ and ‘Helen’ and common surnames like ‘Smith’ and ‘Jones’ are difficult to register. Whether a name is common can depend on how many times it appears on the Australian electoral roll. Generally, if the name appears less than 750 times on the Australian electoral roll, you have a better chance of registering it as a trade mark.

2. Is Your Trade Mark Similar or Identical to Another Trade Mark?

Another mistake to avoid is applying for a trade mark that is similar or identical to an existing one. If you and the owner of a similar trade mark both trade in the same area, IP Australia will reject your application. 

When dealing with an application containing content to an existing trade mark, IP Australia will compare both side-by-side. Even if both trade marks are not identical, IP Australia may still find that they are deceptively similar. This can occur if a person of ordinary intelligence and memory would be deceived by the impressions gained from either trade mark.

To avoid registering a trade mark that is similar or identical to an existing trade mark, you can use IP Australia’s trade mark checker tool to conduct a preliminary check. By entering the keywords of your intended trade mark, you can identify whether someone has registered a similar or identical trade mark.

You should also note that IP Australia may accept two trade marks of a similar nature in some circumstances. For example, a boutique clothing store in Sydney might have a registered trade mark that is similar to a trade mark that a restaurant owner uses in Adelaide. In this instance, the trade marks could co-exist given the trade marks protect different goods and services in different industries. 

If you are doubtful of the uniqueness of your trade mark, you should seek legal assistance.

3. Registering For Protection Under The Wrong Class 

When you apply to register a trade mark, you must select which goods and services you wish to protect. This is an important step because your trade mark protection only covers the goods and services you have included in your application. 

For example, say your business provides cooking classes and sells cooking utensils. If you registered your trade mark only in connection with cooking classes under class 41, your trade mark protection will not extend to the sale of cooking utensils.

You should note that once you have filed your application with IP Australia, you cannot attempt to include additional classes in your application. In this instance, you will likely have to reapply to IP Australia with a new trade mark application at an additional cost. 

To avoid this, you must identify all the classes relevant to your business. Since many goods and services fall under more than one class, you must choose the most relevant classes from the pick list. An experienced trade mark lawyer can advise you on which classes are the most appropriate for your business. 

Key Takeaways

When registering a generic word as a trade mark, you should consider:

• what words or terms IP Australia are likely to consider generic;
• Search ATMOSS to ensure that someone has not registered a trade mark that is similar or identical to your own; and 
• select the appropriate trade mark class or classes in your application.

If you have any questions about the distinctiveness of your trade mark, our experienced trade mark lawyers can help. Contact us at 1300 657 423 or fill out the form on this page.

Frequently Asked Questions