Can I Include Generic Words In My Trade Mark?

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.

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.

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