Trade Mark Registration: Restrictions and Limitations￼
Your intellectual property (IP) is an important business asset, making it essential to protect it properly. To best look after your IP, you might be considering trade mark registration. A registered trade mark gives you exclusive rights to the use and commercialisation of your trade mark. However, there are several restrictions when it comes to trade mark registration. This article will take you through eight categories of trade marks that cannot be registered.
1. Scandalous Trade Marks
You cannot register trade marks that are considered scandalous or offensive. It is up to the Registrar to determine exactly what cannot be registered, although anything considered defamatory, discriminatory or offensive is prohibited. This includes any trade marks that contain offensive language, words that condone violence, or even things considered to be in poor taste.
2. Words Restricted by Legislation
Words, phrases or symbols restricted by legislation cannot be registered as a trade mark in Australia. A common example of this includes restricted words relating to the banking and financial services industry. This restricts words such as ‘bank’, ‘ADI’, ‘credit union’, ‘banking’ and more. To use any of these restricted phrases, you need to seek authority from the Australian Prudential Regulation Authority (APRA), as only authorised deposit-taking institutions can use these in a trade mark.
Similarly, the use of the word ‘Champagne’ is prohibited for trade mark registration, as it is governed by the Wine Australia Corporation Act 1980.
3. Prohibited Signs
Under the Paris Convention for the Protection of Industrial Property, member states, including Australia, must refuse and invalidate a number of protected signs and symbols from trade mark registration. This includes:
- flags, including national flags;
- emblems, such as the Red Cross symbol or the Olympic rings;
- abbreviations and names of intergovernmental organisations, such as the acronym ‘UN’.
Under this Convention, member states must refuse to register such trade marks and provide effective means to stop the use of such symbols where unauthorised.
4. Registered Trade Marks
Trade marks that are identical or deceptively similar to existing trade marks are not eligible for trade mark registration. The very purpose of a trade mark is to distinguish your goods and services from those of others. For that reason, it is not possible to register a trade mark similar to an existing trade mark if you operate within the same class of goods or services.
5. Descriptive Words or Phrases
Although not prohibited, you will find it difficult to register a trade mark for a descriptive word. A simple example of this would include a candle business attempting to register a trade mark for the phrase ‘Best Scented Candles’. A trade mark registration granted for this phrase would be unfair to other candle businesses. This is because they would no longer be able to use this descriptive term.
Some other examples of difficult words to register would include ‘Clean’ for cleaning products as it describes its function, or ‘Banana’ for a dessert, as it is a common ingredient. Instead, a trade mark should refer to the company that creates or sells the products. It can also be completely random, unique or novel regarding the goods or services.
6. Geographical Names
Another common category you will have difficulty registering as a trade mark includes place names or references to geographical locations. This is because others in your industry need to be able to indicate to consumers where their goods are manufactured or sold from without infringing on someone else’s trade mark. Having a registered trade mark for a geographical name would therefore be an unfair monopoly on the term. An example of this includes ‘Barossa’ for wine.
7. Commonly Used Terms
Similarly, you will have difficulty registering commonly used:
- letters; or
Similarly to geographical names or descriptive words, it is difficult to register common acronyms, letters or numbers. Others in your industry will also need access to these. For that reason, having a registered trade mark in any of the above categories would be an unfair monopoly in your favour.
For example, registering a trade mark for ‘4WD’ or ‘4×4’ will be difficult if your business is in the vehicle industry, as others need to be able to use this without infringing on your trade mark registration.
8. Common Surnames
Common surnames will also be difficult to register as a trade mark. For example, while you may wish to register a traditional business name such as ‘Smith & Sons’ or ‘Smith’s Mowing’, others with the same name in your industry may also need to be able to use their own name in the operation of their business. If you have a much less common surname, you may find it easier to register a trade mark for your surname.
There are a range of restrictions when it comes to trade mark registration. Categories of trade marks that you cannot register, or that are difficult to register include trade marks that are:
- restricted by legislation;
- already registered;
- descriptive; and
- commonly used names and geographical terms.
Frequently Asked Questions
A trade mark registration is a form of intellectual property (IP) protection that you should consider to protect your business. Trade marks can take many forms, such as your business’ logo, name, colours, song or slogan. A trade mark registration is beneficial as it gives you exclusive rights to the use and commercialisation of your brand assets.
There are a range of restrictions when it comes to trade mark registration. Categories of trade marks that cannot be registered or that are difficult to register include trade marks that are scandalous, restricted by legislation, prohibited, already registered, descriptive or a commonly used phrase, name or geographical term.