3 Examples of Words You Cannot Trade Mark in Australia
It can be tricky to navigate words that you can or cannot trade mark. There are often complicated distinctions between being able to trade mark an image or phrase and not being able to. Examples of words you cannot trade mark in Australia can be useful if you are trying to settle on a branding portfolio and are unsure if the words and phrases you want to trade mark are allowed. This article will give examples of descriptive words, everyday words, protected categories and scandalous words. Each category will provide specific examples of words and phrases you cannot trade mark in Australia.
1. Descriptive Words and Everyday Words
Generally, you cannot trade mark descriptive words in Australia. This is because descriptive words should be available to use freely to describe matters in the public domain. Preventing the use of descriptive words by having a trade mark would artificially limit the amount of communication available to businesses wishing to advertise to their customers. For example, if you wanted to trade mark the word ‘chair’, you would not be able to. That is because the word ‘chair’ is descriptive and has widespread usage.
In addition to descriptive words not being eligible for trade marking, everyday words or phrases cannot be trade marked either. For example, “The Good Choice” is a laudatory term and everyday phrase that you cannot trade mark. This is because something being “The Good Choice” is a common, everyday phrase that should be available for public use for goods and services.
2. Protected Categories
Words or images relating to the government, national and state flags or armed forces are strictly prohibited from being trade marked. This is to protect the national or state character from being misrepresented in the marketplace. It also protects consumers from falsely relying on the goodwill associated with government products or services. When international trade mark law was being developed, it was agreed by Madrid Protocol countries like Australia not to allow the trade mark of goods that fall within protected categories, including national and state flags.
For example, you cannot trade mark any image that is substantially similar to the coat of arms of Queensland. You may, however, be able to trade mark phrases like “Queensland Coffee Roasters” if you can show that:
- you have used the phrase for a period of time; and
- the public relies on and recognises the geographical name as your trade mark.
If you can prove the above two facts by providing evidence to support your claims, you may be able to register a trade mark despite it containing a geographical feature. This is not an easy process, and you are advised to obtain professional advice before applying to trade mark a location-specific element.
3. Scandalous Words
You will not be able to trade mark a scandalous word or term. The criteria for a design or phrase to be scandalous is if any trade mark elements contain scandalous material. This includes swear words, offensive slogans and any hateful or racist words. This is to protect the public from scandalous phrases becoming established in the marketplace.
It is important to recognise the distinction between scandalous and poor taste. Colloquialisms that are in poor taste but not expressively scandalous may be registrable as a trade mark. For example, the business name ‘POMMIEBASHER’ was not considered to be scandalous, despite being controversial. Still, it is best to seek legal advice if you intend on trade marking something that fits into this category.
This article has outlined examples of the sort of words you cannot trade mark. Before deciding to trade mark a word or logo that you are unsure about, you should consider:
- if it is an everyday term;
- if a reasonable person would view the logo or phrase as offensive; and
- whether the word, picture or phrase is related to government emblems, products or services.
Frequently Asked Questions
You cannot trade mark everyday phrases or terms, scandalous elements or words, or pictures or phrases that are government products or services.
You cannot trade mark a scandalous word or image because it is against the public interest. You are free to use these words, images or phrases to represent your business, but you will not be able to trade mark them.
Can I trade mark a location name?
Generally, you will not be able to trade mark a location name. However, if you have been using the location name and the public identifies your brand with that location, you may be able to trade mark an image or phrase containing a reference to said location.