What Can’t I Register as a Trade Mark?
A trade mark is one way to help your brand stand out in the marketplace. Businesses will often seek to register a trade mark for their business name, logo, slogan or even their business’ jingle. However, while trade marks can take many forms, there are some restrictions on what you can and cannot register as a trade mark. To help you with the trade mark registration process, this article will take you through five examples of what you cannot register as a trade mark.
1. Descriptive Words
A trade mark cannot be descriptive. This means that it cannot describe the quality, purpose, or other descriptive characteristics of the goods or services for which it is being used.
For example, the word ‘fresh’ will be difficult to register as a trade mark if your goods or services relate to groceries. This is because a trade mark cannot disadvantage the needs of others in your industry. It would be unfair for one business to have a monopoly over the word ‘fresh’ for groceries.
2. Commonplace Words or Images
Trade marks cannot utilise any word or phrase that other businesses in the industry regularly need. Again, a single trade mark owner with exclusive rights to common phrases would be unfair to others in the industry.
Additionally, you will not be able to register exact images of common industry goods. For example, a common industry good in the photography industry would be a camera. Therefore, a photography business would not be able to register an image of a camera as a trade mark.
The limitation on commonplace words or images also extends to common abbreviations, acronyms or numbers that are associated with your industry. Some examples of this include ‘24K’ for trade marks relating to jewellery or ‘4×4’ for trade marks relating to vehicles. Therefore, it would be difficult to obtain trade mark registration for commonplace words or images. If they feature in your application, it is best to remove them.
It is challenging to get business names as registered trade marks. This includes common first names, surnames or the names of geographical locations.
Occasionally, some businesses that have built a substantial reputation at a specific location over time may obtain the right to use a geographical name. However, this will rarely be possible. In particular, it will be especially difficult to register the names of geographical areas known for particular goods or services, such as the Yarra Valley for wine.
Additionally, certain surnames contained in business names may also be registered as trade marks by their owners. For instance, common surnames such as ‘Smith’ or ‘Jones’ will be harder to register. On the other hand, it will be much easier if you have a unique or rare name.
4. Restricted Words
Restricted words are another example of what you will not be able to register as a trade mark. Specifically, there are a number of words relating to financial services that are prohibited for use in trade mark class 36.
Examples of forbidden words and phrases include:
- Authorised Deposit-Taking Institution;
- Credit Society; and
- Credit Union.
These words are prohibited to prevent businesses from falsely misrepresenting themselves as a bank or other authorised deposit-taking organisation. If you want to use any of these words in your trade mark, you will need to seek approval from the Australian Prudential Regulation Authority (APRA).
5. Prohibited Words and Signs
Finally, international conventions also prohibit several types of words and signs from trade mark registration.
These include various signs such as:
- hallmarks; and
- abbreviations and names of international intergovernmental organisations.
IP Australia will refuse to register any trade mark containing a prohibited word or sign, and will take measures to stop their unauthorised use.
When making a trade mark application, you will need to consider whether your proposed trade mark will be eligible for registration. Some things that you will not be able to register as a trade mark include:
- descriptive words;
- commonplace words or images;
- common names;
- restricted words; and
- prohibited words and signs.
If you need assistance applying for a trade mark or determining if you can register your trade mark, our experienced trade mark lawyers can help. You can contact them on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
A trade mark is one type of intellectual property protection that allows you to distinguish your brand’s assets from competitors. This helps you stand out in the market and deter competitors from infringing on your trade mark rights. As a result, trade marks are an excellent legal and marketing tool that will increase the value of your business.
Descriptive words, commonplace words or images, common names, restricted words and prohibited words and signs cannot be registered as trade marks.