Reading time: 5 minutes

Applying for a trade mark is a vital step in achieving brand recognition. However, having indistinct and generic words as your business name can make it more difficult to acquire trade mark registration, and thus, more difficult to enforce your rights against copycat competitors. As such, if you are considering applying for a trade mark and achieving a brand monopoly, there are a few things to consider.

What Does IP Australia Consider to be a Generic Word?

When thinking about your business or product name, it is best to develop a unique name that does not include commonly used words or terms. For example, suppose your trade mark only includes words that define your goods or services’:

  • quality;
  • intended use;
  • quantity; or
  • geographical location.

In that case, it is unlikely to meet the requirements for acceptance if applied for, unless you can demonstrate evidence of significant previous use. It will also be difficult to register a trade mark that contains common surnames. Some examples of trade marks that may be difficult to protect are:

  • North Sydney Florists;
  • White Teeth Dental Clinic;
  • Eco-Friendly Recycling Services; or
  • John Smith’s Donut Shop.

The above examples reflect commonly used names or phrases that many traders will use during the course of their business. The purpose of a trade mark is to provide you exclusive rights to use your chosen trade mark. Other dental businesses, for example, will need to use the words ‘White Teeth’. IP Australia will grant you trade mark rights if you can differentiate your business name from other traders in the same industry. Therefore, you must use a unique trade mark to differentiate your business.

What Are Some Generic Words?

As we have explored, generic words and terms face more difficulty in achieving trade mark registration in Australia. This is because they are common words that identify objects not specific to any particular source, or they cannot distinguish the product or services from other products or services. If your trade mark is merely descriptive and used to describe the products’ type, quality, or value, it can be difficult to register or enforce this trade mark.

Trade marks themselves can even become common terms over time. Some examples of this include, ‘I need a Band-Aid!’ or ‘Just Google it!’. 

However, another common phrase that eventually became distinguishable enough for trade mark registration is ‘Just Jeans’, a popular Australian denim brand. The term ‘Just Jeans’ is a generic term. However, the Just Jeans brand has been around for over 30 years and has built quite a reputation. As such, they have managed to secure trade marks by proving to IP Australia that they have a reputable brand and have extensively used their branding.

The ‘Vittoria Coffee’ Case

In 2014, Vittoria Coffee brought an action against rival companies. The action was for using the Italian words for ‘gold’ and ‘five star’ in their advertising materials. The majority of the High Court ordered that the Italian words, ‘Oro’ and ‘Cinque Stelle’ can be trade marked.

They determined that they ‘were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee grounds as to be words having a direct reference to the character or quality of the goods.’

The words themselves did not have an ordinary, generic meaning to people living in Australia.

The minority decision of the High Court was concerned about the extensive Italian population in Australia who would understand the words to refer to quality or characteristics of a product and would not specifically distinguish the words as referring to the products of Vittoria Coffee.

This decision means that it may be possible to include generic words or terms as part of a trade mark if you are interested in adopting foreign words as part of your business name or marketing material.

Key Takeaways

Starting a new business is an exciting time and securing your branding is vital. Suppose you are unsure which words or phrases are likely to be considered generic. In that case we recommend that you get in touch with a trade mark specialist.

Here are some key considerations for registering a successful trade mark:

  • Do some preliminary research. Have you found a similar trade mark or business?
  • Come up with a unique business name.
  • Engage a specialist! We can conduct IP searches and advise of generic terms to avoid.

We can file your trade mark to ensure a successful result. If you have any questions, contact LegalVision’s intellectual property lawyers on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

What words should I avoid in my trade mark application?

You should avoid overly generic words. Generic words are words that solely describe your product’s quality, intended use, quantity, or geographical location.

How can I ensure that my trade mark is registrable?

Engaging a trade mark professional to conduct thorough trade mark searches and determine the eligibility of your trade mark will help ensure a smooth registration process.

Webinars

Corporate Governance 101: Responsibilities for New Directors

Wednesday 27 April | 11:00 - 11:45am

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

Rogue Directors and Business Divorces: How to Remove a Director

Thursday 28 April | 11:00 - 11:45am

Online
Removing a board director is not simple. Join our free webinar to learn how to handle rogue directors. Register today.
Register Now

Employment Essentials for Tech Businesses

Thursday 5 May | 11:00 - 11:45am

Online
Protect your tech business and your employees by understanding your employment legal obligations. Register for our free webinar today.
Register Now

How to Protect and Enforce Your Trade Mark

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

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

How Franchisors Can Avoid Misleading and Deceptive Conduct

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

Online
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

Online
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

Online
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

Online
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

Online
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

Online
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