Tips for Registering a Distinctive Trade Mark
An essential feature of a registered trade mark is its distinctiveness. Distinctiveness means that the trade mark is recognisable and unique enough to identify your brand and the source of your products. For example, the IKEA branding is highly distinctive as you immediately associate the logo with IKEA goods and services. This is important because consumers can distinguish your business’ goods and services from others in the market. Therefore, you must avoid applying for descriptive marks when filling out your trade mark application. A descriptive mark is one that merely describes a product’s characteristics. Descriptive marks usually lack an inherent distinctiveness as these descriptions can apply to other products as well. This could cause confusion and make it unlikely for your trade mark registration to succeed. This article provides four useful tips you should keep in mind to help you register a distinctive trade mark.
1. Avoid Ordinary Descriptions
Descriptive marks are difficult to register. This is because trade mark law views these descriptions as capable of being used by many businesses within the same industry. For example, using the word ‘clean’ in a trade mark that protects your business’ cleaning services would be difficult to register, as the word ‘clean’ would also be beneficial for other cleaning services. As you can tell, trade marks that include merely ordinary descriptions do not have an inherent distinctiveness.
You should also avoid using common phrases and acronyms in your trade mark application for the same reason. For example, the phrase ‘eco friendly’ or the acronym ‘HD’ would be considered generic terms.
To avoid descriptive terms, you should consider using in your trade mark:
- an invented word for your innovative product or service;
- a catchy slogan;
- a unique combination of words or numbers; and
- foreign words, even if they describe your goods and services, as consumers are not expected to understand its meaning.
By registering a mark that avoids generic terms, you increase your chances of applying for an inherently distinctive mark. This also means that you increase your chances of having the Trade Marks Office approve your trade mark application.
2. Using Your Surname
Understandably, many trade mark owners choose to trade under their family names when their business is run by people within the same family for generations. However, as with generic terms, common surnames also lack distinctiveness. Surnames like ‘Smith’ and ‘Jones’ may be challenging to register since they are so generic.
Whether a last name is uncommon can depend on how many times it appears on the Australian electoral roll. For example, the Trade Marks Office recently rejected an application to register a jewellery trade mark because the surname ‘Barton’ was sufficiently common. At the time of their decision, the name Barton appeared on the electoral roll 5100 times. Generally, if your surname appears less than 750 times on the Australian electoral roll, the Trade Marks Office is likely to deem it uncommon. If this is the case, you are likely able to use your surname, given its distinctiveness.
3. Composite Trade Marks
You can also make your trade mark more distinctive by using a unique combination of words, numbers and images. Composite trade marks are made up of different elements that can distinguish your business’ goods and services when taken as a whole.
A good example of a composite trade mark is the logo of the National Australian Bank. It includes an acronym (‘NAB’) and a distinctive seven-pointed star. Both features together are instantly identifiable with the National Australian Bank.
When applying for a composite trade mark, it is unnecessary to ensure that each of its features is distinctive or registrable on its own. Instead, you should focus on whether the features combined can distinguish your goods and services from others in the market.
This means that you may use generic terms, phrases, acronyms, and surnames in your trade mark if combined with other unique features to make up a composite trade mark.
4. Consider Using a TM Headstart Application
When applying for a registered trade mark, you can choose to use a TM Headstart application. A TM Headstart application involves a delegate from IP Australia assessing your application before you formally submit it for IP Australia’s review. Although this service comes at an additional cost, the delegate can help you identify any deficiencies in your application, including whether or not your trade mark is distinctive.
After receiving the delegate’s assessment, you can then make amendments to your application. This is unlike a standard trade mark application which does not include a pre-assessment service. However, you should note that once you submit your trade mark application, you cannot make significant changes. Therefore, you must take suitable measures to ensure that your application is in good shape for review.
To increase your chances of registering a distinctive trade mark, you should avoid ordinary:
- phrases; and
- last names.
If you wish to include these generic terms in your trade mark, you should consider combining them with other distinctive features to create a unique composite mark. To help determine whether your trade mark is distinctive, you should consider using a TM Headstart application. If you need help with registering a distinctive 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
Under trade mark law, your registered mark is only protected for 10 years from its filing date. However, 12 months before your application nears its expiry date, you have the option to renew your application via IP Australia’s online services. If you decide not to renew your application, your trade mark will lapse.
Proving that your unregistered trade mark has become distinctive over time can be difficult but not impossible. For example, suppose you have used an ordinary description to identify your business, and consumers closely associate this mark with your business. In that case, you could argue that the description has a secondary meaning. In this way, IP Australia may accept that your mark has acquired distinctiveness.