Whether you are a business owner, company director or marketing manager, you would already understand the importance of registering your trade mark to protect your brand. Below, we set out seven tips for you to consider when choosing your trade mark.
Why Obtain a Trade Mark Registration?
In short, trade mark registration gives you legal protection to the exclusive use of a sign (for example, a word, phrase, shape, colour or sound), used in relation to good or services. Importantly, under the Trade Marks Act 1995, if you have successfully registered your trade mark, you can stop other people from using your brand for the same or similar products or services.
This prevents your competitors from using your trade mark in relation to their inferior quality goods or services, and causing damage to your reputation. It also assists consumers in differentiating your goods from your competitors. When thinking about a brand to register as a trade mark, you should consider a few points to avoid a costly and lengthy registration process.
Can You Register Your Trade Mark?
The Trade Marks Act 1995 provides that trade marks must satisfy certain features before registration. Typically, trade mark objections arise because the trade mark is the same or considered too similar to another trade mark already on the register.
Another hurdle to overcome is when IP Australia doesn’t see a trade mark as inherently capable of distinguishing the goods and services specified in the application. What this means is that IP Australia won’t register a trade mark that it considers to generic. The law won’t give a single trader a monopoly to use words that other traders need to use when describing or marketing their goods or services.
When IP Australia assesses a trade mark’s distinctiveness or descriptiveness, they use the following classifications:
- Capable of distinguishing on face value;
- Has some inherent adaptation to distinguish but not sufficiently; and
- Does not have the capacity to distinguish.
Trade marks capable of distinguishing on face value mean that you don’t need to provide evidence of use to show that your trade mark distinguishes your goods and services. For business owners, this also means that you can more efficiently obtain trade mark registration. So how do you choose a trade mark and avoid these objections?
1. Invented Words
An invented word is an ideal trade mark as it’s unlikely to be too generic and similar to another already on the register. For example, MAFIO or HAPTITUDE. Importantly, invented words don’t extend to misspelt, or joined words.
Slogans are catchy, memorable and can communicate relatable values and ideas to consumers. When it comes to registrability, unique slogans are more likely to be capable of distinguishing goods and services than single words or short phrases. Familiar examples of registered slogans include Nike’s “Just Do It” and Nestle’s, “Have a Break, Have a Kit Kat.”
3. Combinations of Words and Numbers
Combining words and numbers can create a unique trade mark unless the combination is commonly used in relation to the goods themselves. For example, wines combining the words SINCE or EST and a particular date (since 1985) aren’t considered capable of distinguishing the wine because it’s commonly used to refer to a wine’s vintage.
4. Uncommon Last Names
If you provide professional services and your client base is derived from word-of-mouth, it is prudent to register your last name as a trade mark. It is important to note that uncommon last names are more likely to be accepted as trade marks. Uncommon last names consist of last names that occur less than 750 times on the Australian electoral roll.
5. Device Trade Marks
Trade marks that consist wholly of graphic or picture elements are called device trade marks. Device trade marks are often considered capable of distinguishing unless the device consists only of a graphic representation of the goods for which the applicant uses the trade mark. For example, a picture or a graphic representation of an apple would be a good trade mark for computers, but not so for fruit.
6. Composite Trade Marks
Composite trade marks consist of at least one word and a picture or graphic. Logos are then good trade marks because they are memorable and can easily convey several messages in one sign.
7. Non-Traditional Trade Marks
When used in trade, trade marks are badges of origin. Non-traditional trade marks consist of sounds, colours, smells, shapes, scents, movements and aspects of packaging. Typically, it’s harder to register non-traditional trade marks such as a shape mark or a colour mark on its own. However, it may be possible to register a combination of two non-traditional marks with words or logos, or even two non-traditional marks. For example, Nestle’s application to register Kit Kat’s chocolate finger shape, and Tiffany & Co’s registration of its iconic little blue paper bag.
Questions about registering your trade mark? Ask our trade mark lawyers.