Trade marks are vital commercial assets that add value through brand identity and recognition. Trade marks are signs that you use to distinguish your products or services from those of your competitors. However, in order for IP Australia to accept your application, you must register a distinctive trade mark. Not only is this legally necessary, but commercially valuable, in order for your brand to cut through and get attention. Your mark could be a:

  • name;
  • slogan;
  • logo;
  • image;
  • colour;
  • shape;
  • scent;
  • sound; or
  • combination of these.

Registering a trade mark gives you exclusive use of the mark in your industry. In this article, we set out four considerations for choosing a distinctive trade mark.

1. Understand the Legal Requirements

Firstly, and most importantly, you need to understand what distinctiveness actually means. There’s no point investing in a trade mark that you can’t register.

Essentially, your trade mark needs to be distinctive, meaning it distinguishes your goods or services from those your competitors provide. In addition, it must not be too descriptive of your goods or services.

2. Understand How to Create a ‘Distinctive’ Trade Mark

Creating a distinctive trademark that satisfies the legal criteria can be difficult. However, there are a number of elements you can incorporate into your trade mark to make it distinctive:

  • invented words: An invented word is an ideal trademark, as it’s unlikely to be generic or similar to another already on the register;
  • slogans: Slogans are catchy, memorable and can communicate relatable values and ideas to consumers;
  • unique combinations: combining the common with the uncommon, such as words with numbers, is an easy way to make an otherwise common mark unique;
  • foreign words: Foreign words are generally passable, even if the meaning of the words describe your product or service. As long as the general public aren’t expected to understand what the word means, it can still be considered distinctive;
  • uncommon surnames: If you provide professional services and rely on word-of-mouth marketing, you may wish to register your last name as a trade mark. It is important to note that IP Australia is more likely to accept last names as a trade mark if the name occurs less than 750 times on the Australian electoral roll.
  • non traditional trade marks: Sounds, colours, smells, shapes, scents, movements and aspects of packaging can also be utilised. These are effective ways to create a distinctive trade mark, but they can be more difficult to register.

3. Know What to Avoid

IP Australia will look into whether your trade mark features commonly-used descriptive terms, phrases or images. If it does, IP Australia may not accept it for registration. This is because these types of signs should be available for all traders to use to describe characteristics of their goods and services.

To ensure that your trademark application is successful, you should avoid using:

  • surnames, particularly common surnames;
  • descriptions of your goods or services, or their quality or intended purpose;
  • suggestive words that are commonly used with your goods or services;
  • names of geographical locations, especially if the location has a reputation for providing your goods or services;
  • images that depict your goods or services;
  • numbers;
  • short acronyms; and
  • prohibited signs such as armorial bearings, flags, emblems, official signs, hallmarks, and names of international intergovernmental organisations.

4. Consider the Global Market

While there are no hard-and-fast rules for successful trade marks, you may wish to consider commonly used criteria for creating, designing or selecting a trademark. The sign should:

  • be easy to read, spell, pronounce and remember in all relevant languages;
  • have no adverse meaning in slang or undesirable connotations;
  • be suitable for export markets with no adverse meaning in foreign languages, especially if you intend to commercialise the product or service abroad;
  • not create confusion as to the nature of the product; and
  • be adaptable to all advertising media.

Mitsubishi chose a poor trade mark which had major ramifications for the company. In 1982, it debuted the Pajero. However, Mitsubishi missed a crucial Spanish translation of the SUV’s name, which means “wanker”. As a result, the company had to undergo a major rebranding strategy, marketing the SUV as the Montero or Shogun, depending on their market.

Key Takeaways

In order for IP Australia to accept your registration, your trade mark must be distinctive. There is no specific formula for creating a distinctive trade mark; rather, it’s a cocktail of written and visual elements, the uniqueness of your brand name and how it compares to what already exists, especially in your industry. If you need help registering a trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Nessim Malak

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