Trademark registration is an effective method of protecting your brand. However, trademark registration is not always possible. This article outlines the most common reasons an application to register a trademark may be unsuccessful.

The Trade Marks Act 1995 sets out a list of grounds for rejecting an application in sections 39 to 44. Additionally, the grounds for opposing trademark registration are set out in sections 57-62A. Opposition to registration is less common than rejection of an application during the examination process. The most commonly invoked reasons for rejecting an application for trademark registration are:

  • Section 41: Trademark not distinguishing applicant’s goods or services; and
  • Section 44: Identical etc. trademarks.

Is your trademark capable of distinguishing your products?

A trademark needs to distinguish the goods and services to which it relates. If it doesn’t, it is unlikely to be given protection.[1] In practice, this means that trademark registration will be difficult to achieve when a trademark merely describes the goods or services for which it is or will be used.

  • Trademarks containing commonly used words

Trademarks containing words commonly used in relation to the goods and services are unlikely to be registrable. This is because excluding others from using those words would be unfair. Other traders ought to be able to use the same words to describe their own goods and services. For example, using the word “Cruiser” to advertise a boat would be considered descriptive, and other boat manufacturers ought to be able to use that word in describing their own products.

Similarly, businesses ought to be able to describe the functionality and intended purposes of their own products. This means that trademarks that do this aren’t likely to be distinctive, containing words that other traders ought to be able to use to describe their own goods or services. For example the words “unblock your drain” are unlikely to be considered ‘capable of distinguishing’ one business’ plumbing services from those of another. To register a trademark, you must consider the needs of other traders in your industry.

  • Trade marks that describe quality, quantity or value

It’s one thing to call your product superior in quality to all other products, but it’s an entirely different thing to prevent others from doing the same. Trademarks that contain words that describe the quality of the goods and services are unlikely to achieve trademark registration. For example, it would be unfair to give a single clothing manufacturer the right to use the word “quality”, or a single tiler the right to describe their services as “the best”.

Similarly, trademarks describing the quantity of a product or amount of a service are unlikely to be registered. Many traders advertise the quantity of the contents of their products and it would be unfair to prevent other traders from doing so. To register a trademark, try to be as original as possible.

  • Is the word indicative of geographic origin?

Trademarks containing geographic names are generally difficult to register. This is particularly the case where the geographic name indicates the place of origin of the goods, especially if the location is a well-populated or large area. As is the case for the above categories of descriptive trademarks, other traders ought to be able to describe their own goods or services with reference to their location.

Additionally, geographic names with a connection or potential connection to the goods or services will not usually be considered capable of distinguishing those goods or services. For example, it may be difficult to register a trademark containing the word “Oahu” for surfing equipment.

  • Trademarks containing common surnames

Trademarks containing common surnames can be difficult to register, as other traders with the same name will have a legitimate need to use it in connection with their own products. A common surname is one that occurs 750 times or more.

Identical or deceptively similar trademarks

Trademarks that are substantially identical or deceptively similar to existing registered trademarks are unlikely to be accepted. When comparing one trademark to another, the key concept is the overall impression given by the trademarks. This may be, on the one hand, the impression when comparing the two trademarks side by side, or the impression when looking at one trademark and recalling the other from memory.[2] It’s important to remember that an ordinary person’s memory is unlikely to be perfect.

Factors that will be considered include:

  • the appearance and sound of the words;
  • the nature of the goods or services;
  • the kind of consumer; and
  • the surrounding circumstances.[3]

Conclusion

If you’re looking to register a trademark, whether it’s a word, slogan, or something else, contact LegalVision on 1300 544 755 to speak with one of our trade mark law experts. There are numerous grounds on which a trademark application can be rejected and it’s important you understand what needs to be done to avoid this.

[1] Trade Marks Act 1995 (Cth) s 41.

[2] Shell Co of Australia v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407.

[3] Pianotist Co.’s Application (1906) 23 RPC 774.

Daniel Smith

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