Reading time: 5 minutes

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]


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.


How to Protect and Enforce Your Trade Mark

Wednesday 11 May | 11:00 - 11:45am

Protect your business’ brand from copycats and competitors. Register for this free webinar to learn how.
Register Now

Corporate Governance 101: Responsibilities for New Directors

Friday 13 May | 11:00 - 11:45am

If you are a new company director, join our free webinar to understand your legal compliance obligations. Register today.
Register Now

How Franchisors Can Avoid Misleading and Deceptive Conduct

Wednesday 18 May | 11:00 - 11:45am

Ensure your franchise is not accused of misleading and deceptive conduct. Register for our free webinar today.
Register Now

New Kid on the Blockchain: Understanding the Proposed Laws for Crypto, NFT and Blockchain Projects

Wednesday 25 May | 10:00 - 10:45am

If you operate in the crypto space, ensure you understand the Federal Government’s proposed licensing and regulation changes. Register today for our free webinar.
Register Now

How to Expand Your Business Into a Franchise

Thursday 26 May | 11:00 - 11:45am

Drive rapid growth in your business by turning it into a franchise. To learn how, join our free webinar. Register today.
Register Now

Day in Court: What Happens When Your Business Goes to Court

Thursday 2 June | 11:00 - 11:45am

If your business is going to court, then you need to understand the process. Our free webinar will explain.
Register Now

How to Manage a Construction Dispute

Thursday 9 June | 11:00 - 11:45am

Protect your construction firm from disputes. To understand how, join our free webinar.
Register Now

Startup Financing: Venture Debt 101

Thursday 23 June | 11:00 - 11:45am

Learn how venture debt can help take your startup to the next level. Register for our free webinar today.
Register Now

About LegalVision: LegalVision is a commercial law firm that provides businesses with affordable and ongoing legal assistance through our industry-first membership.

By becoming a member, you'll have an experienced legal team ready to answer your questions, draft and review your contracts, and resolve your disputes. All the legal assistance your business needs, for a low monthly fee.

Learn more about our membership

Need Legal Help? Submit an Enquiry

If you would like to get in touch with our team and learn more about how our membership can help your business, fill out the form below.

Our Awards

  • 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice Winner – Australasian Lawyer
  • 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year - Australasian Law Awards
  • 2019 Most Innovative Firm - Australasian Lawyer