Restricted Signs to Avoid When Registering a Trade Mark
George Raptis
When you begin to apply for a trade mark, it may seem like you have to jump through many different hoops. From the different application requirements to the various restricted words and signs you should avoid, there are many factors you need to consider before registering a trade mark. This article provides an outline of several restricted signs you should avoid when registering a trade mark to minimise the possibility of having your application being opposed or even rejected.
National Symbols
Since Australia is a signatory to the Paris Convention for the Protection of Industrial Property, we have agreed to protect certain signs from being used in a trade mark. As a result, one of the grounds for rejecting and opposing a trade mark application is that it contains a national symbol. Signs that are prohibited from being used in a trade mark application include:
- flags or seals that are used to identify different countries or regions;
- signs that are used to identify intergovernmental organisations; and
- foreign national symbols.
Since these signs are internationally recognised as identifiers of different nation states, it would be wrong to allow individual business owners to use these signs in any other way. For example, if you attempt to trade mark the Australian flag to protect your business’ goods or services, IP Australia is likely to reject your application.
Common and Generic Signs
Other signs you should avoid when registering a trade mark are signs that are generic or ordinary. This is because a trade mark that contains a common sign alone may be incapable of distinguishing your goods or services from your competitors. You can find some examples of common signs in the table below.
| Common Sign | Example |
| Signs that indicate the type of goods or services. | An image of a shirt for a clothing brand. |
| Signs that indicate the quality of the goods or services. | Using the word ‘fresh’ for describing farmed-produce. |
| Signs that indicate the quantity of the goods. | Signs that include the storage capacity of a computer, i.e. 256GB. |
| Signs that indicate the intended purpose of the goods or services. | Signs like ‘ClearSkin’ for face washing products. |
However, this is not to say that you cannot use a common sign at all when registering a trade mark. Common signs can often be accompanied by other unique features, such as text or symbols, to make them distinguishable. For example, the word ‘fresh’ describing your farmed produce can be accompanied by an image of your unique company mascot. This way, your sign will be capable of distinguishing your business from other competitors in the market.
Scandalous Signs
This may be an obvious sign to avoid when registering a trade mark. IP Australia is likely to reject any scandalous material contained in a trade mark application. Under the Trade Marks Act, there is no strict definition of scandalous material. However, scandalous signs are likely to include:
- profanity;
- racial slurs;
- sexist commentary;
- blasphemy; and
- signs inciting violence or criminal activity.
For this reason, it would be wise to only use signs that are in good taste and are considerate of others in the public. After all, you want to attract business with your trade mark, not deter customers from choosing to engage with your business by offending them with your trade mark.
Signs Relating to Banking and Financial Services
A less obvious restriction on signs that you can include in a trade mark application are those relating to financial service under class 36 of the Trade Mark Classification Search. If you conduct financial services, you are prohibited from using words in your trade mark application such as ‘banking,’ ‘building society’ and ‘credit society’ unless you seek permission from the Australian Prudential Regulatory Authority (APRA).
Ways to Check Whether Your Sign is Restricted
Beyond the description of restricted signs listed in this article, there are other ways you can check whether your sign is restricted. Of course, there is no foolproof way of knowing whether IP Australia will accept your application, but these tips can nevertheless improve your application’s acceptability.
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 registrable. This can provide you with a helpful guideline to deciding whether the sign you have used is registrable or not.
2. Use a TM Headstart Application
As opposed to a standard trade mark application, a TM Headstart application is another way that you can register your trade mark. A TM Headstart application involves a specialist assessing your trade mark application before you formally file it with IP Australia. The specialist can point out any deficiencies in your application and allow you to make amendments to your application if your sign is likely unregistrable.
3. Consult a Trade Mark Lawyer
Of course, an experienced trade mark lawyer can always advise you as to the strength of your trade mark application and whether you have used a restricted sign or not. If you are ever in doubt of your application, it would be wise to seek legal advice before you proceed to file your application with IP Australia.
Key Takeaways
When registering a trade mark, you should avoid signs that include:
- national symbols;
- common or generic symbols;
- scandalous material; and
- certain words associated with financial services.
If you need help with avoiding restricted signs when 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
Trade marks are a form of intellectual property protection that provides their owners with the exclusive right to use, licence and sell their trade mark. Consequently, a registered trade mark is an ideal way for protecting your business brand from competitors in the market who may copy or misappropriate it.
Generally, IP Australia cannot give you tailored legal advice as to the registrability of your trade mark. However, they do provide general information regarding trade marks on their website.