What Are the Grounds for Trade Mark Rejection?

George Raptis

• 29 September 2021
• 29 September 2021
• 5 min read

Many trade mark owners are unaware of the reasons why IP Australia can reject their trade mark application. This often results in confusion and frustration when applicants find out that their application has not succeeded. To minimise the potential of IP Australia rejecting your application, this article will outline the common grounds for rejection. Doing so can hopefully help you to get your application right the first time, and save you from having to reapply.

Trade Marks Not Capable of Distinguishing Your Business 

Trade marks protect the features that distinguish your business from competitors in the market. If your proposed mark cannot differentiate your goods and services, then IP Australia will likely reject your application.

A trade mark can be incapable of distinguishing your goods and services for a number of reasons. Specifically, your application will be unsuccessful if your trade mark contains: 

• merely descriptive phrases to indicate the nature, quality, quantity, geographic origins or intended purpose of your goods and services;
• ordinary descriptions that your industry widely uses; or
• the time your goods were produced or the time you deliver your services.

For example, a greengrocer may not protect the phrase ‘fresh fruit’ via a registered trade mark because it is just describing something in plain terms.

Similarly, a wine producer in the Hunter Valley may not be able to protect the phrase ‘Hunter Valley Wine’ in relation to their products because it is a geographical location.

There are policy reasons as to why IP Australia may reject trade mark applications that contain ordinary descriptions. Importantly, it would be unfair to prevent businesses from using those ordinary, common descriptions.

This does not mean, however, that you must avoid ordinary descriptions altogether. Descriptions of your product’s quality or quantity in your application are allowed if paired with a unique image or word combination. For example, a greengrocer might protect its unique business slogan that contains the phrase ‘fresh fruit.’ Similarly, a wine producer could protect the phrase ‘Hunter Valley Wine’ if it appears on their unique business logo. Therefore, it is important you ensure that your trade mark is distinctive and not just descriptive for a successful trade mark application.

Trade Marks That Are Identical to Existing Trade Marks

IP Australia can also refuse your trade mark registration application if it is identical to existing trade marks. If IP Australia judges that your mark is too similar, it will be rejected. Consequently, the trade mark that existed before yours will be prioritised. For example, imagine that you attempt to register a ‘swoosh’ symbol to protect your boutique shoe brand. In this case, IP Australia would likely reject your application on the basis of its similarity with Nike Inc.’s trade mark rights.

There is the possibility that IP Australia will allow the use of two identical marks at the same time. However, this largely depends on the circumstances of each case. To avoid applying for an identical trade mark, you should conduct a comprehensive search on IP Australia’s trade mark register. By searching the details of your proposed trade mark, you can determine whether a similar trade mark already exists. If so, you can make adjustments to your application accordingly to avoid similarities with other trade marks.

Trade Marks That Are Likely to Deceive or Confuse Consumers

Another reason IP Australia can reject your application is if they think it may deceive or confuse consumers. If your trade mark seems to imply something untrue in relation to the goods or services it covers, it will likely meet this criterion. For example, IP Australia may reject a trade mark that suggests the quality of certain products meets a certified standard that it does not in fact meet. 

Another example might be if you source goods locally, but your trade mark suggests you source goods from a foreign country. In this case, your trade mark may also be capable of deceiving consumers. Therefore, to avoid rejection, you should ensure that your trade mark is simple and straightforward. It should convey a clear, accurate message about your business and the type of products and services it offers to consumers.

Trade Marks That Contain Prohibited Signs

Additionally, there are several signs which are prohibited from trade mark protection. These signs include:

• scandalous materials that include profanity, racial or sexist slurs, or signs that incite violence;
• national flags; and
• emblems associated with intergovernmental organisations.

To avoid a trade mark examiner from IP Australia rejecting your trade mark registration application, you should ensure that your proposed mark avoids any of these prohibited signs.

Key Takeaways 

IP Australia can reject your trade mark application if it:

• merely describes your goods and services;
• contains ordinary descriptions of the kind, quality or quantity of your goods and services;
• is identical to an existing registered trade mark;
• is likely to deceive or confuse consumers; or 
• contains prohibited signs. 

If you need help with avoiding the grounds for trade mark rejection, our experienced IP lawyers can assist. Call us on 1300 657 423 or complete the form on this page. 

Frequently Asked Questions