Restricted Words to Avoid When Registering a Trade Mark for Your Financial Service
When registering a trade mark, Australia’s intellectual property (IP) office, IP Australia, are required to assess your trade mark. For example, this includes ensuring that your trade mark meets the legislative requirements to be registered as a trade mark.
In particular, there are stringent rules for trade marks used in the financial services industry. This is because banks hold an important role in the community, and it is essential that you do not mislead customers about who is an authorised financial service.
If you are a financial service seeking to register a trade mark for your business, this article will take you through a guide to trade mark registration for financial services.
Trade Mark Requirements
Before registering a trade mark for your financial service, you must understand the legislative requirements for a trade mark. Above all, the key thing to consider is that your trade mark must be distinctive. For example, certain things to avoid to ensure distinctiveness includes:
- words that describe your goods or service;
- commonly used words, phrases or images in your industry;
- common names; and
- geographical locations.
As well as following the above guidelines to ensure distinctiveness, there are other words that you will not be able to include in your trade mark. This includes flags, various emblems and names and abbreviations of international intergovernmental organisations.
The list of restricted words continues to expand concerning banking and financial services. In fact, legislation forbids using certain words and expressions for trade marks in class 36 without explicit permission.
Trade Mark Class 36
When registering a trade mark for your goods or service, you will be required to select the applicable trade mark ‘class’. This refers to the different categories of goods and services listed under the Nice registration system. The trade mark class or classes you select when applying is important because your trade mark is protected under the nominated classes.
Trade mark class 36 covers insurance and financial services. For example, this includes:
- banking establishments and connected institutions (such as exchange brokers);
- credit institutions;
- share and property brokers; and
- insurance agents and brokers.
Given the restricted words specific to trade mark class 36, you will need to take extra care when registering a trade mark if your service is in the financial services.
The restricted words and expressions concerning financial services include:
- authorised deposit taking institution;
- bank, banker and banking;
- building society;
- credit society; and
- credit union.
This list is not exhaustive, and you cannot use any word or phrase determined to belong to this category. This includes words that are not in English but translate to such terms.
If you want to use any of class 36 restricted words, you will need to be either:
- on the list of Authorised Deposit-Taking Institutions (available on the Australian Prudential Regulatory Authority (APRA) website); or
- have written authorisation from APRA to use these words.
If you have permission to use these words, you will need to provide a copy of the relevant evidence to IP Australia alongside your trade mark application.
Gaining written authorisation from APRA is not always a simple process. In fact, obtaining such permission is a very serious process. It is very rare for APRA to grant financial businesses that are not authorised deposit-taking institutions this consent.
For non-financial businesses, it takes APRA about five business days to respond. However, depending on the complexity of the matter, financial businesses may take up to 60 days to hear a response.
Trust in Australia’s financial industry is a critical element of society. This makes obtaining a trade mark for businesses in financial services somewhat more difficult, with additional restrictions on the words you can use. Therefore, if you are a financial service seeking to register a trade mark for your business, you should consider that you cannot use certain words in a trade mark without either:
- being on the list of Authorised Deposit-Taking Institutions available on the APRA website; or
- written authorisation from APRA to use these words.
If your business is in financial services and you need help applying for a trade mark, our experienced trade mark lawyers can help. Get in touch with them on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
Suppose your business is not on the list of Authorised Deposit-Taking Institutions available on the Australian Prudential Regulatory Authority (APRA) website. In that case, you will require consent to use certain words and phrases. These words and phrases include any words considered associated with the banking or financial services industry, including ‘ADI’, ‘bank’, ‘credit society’ and many more.
Trade mark class 36 covers insurance and financial services. This includes banking establishments and connected institutions (such as exchange brokers), credit institutions, stockbrokers and more. Both the Banking Act 1959 and the Life Insurance Act 1995 forbid using certain words and expressions for trade marks in class 36 without explicit permission.