In Short
- Trade mark registration protects your brand, but marks with purely descriptive words may be rejected.
- Avoid descriptiveness by using unique, distinctive, or nonsensical words.
- Consider composite trade marks with visual elements or establish a strong reputation with consistent use of the mark.
Tips for Businesses
Choose unique, creative wording for your trade marks to stand out and avoid descriptiveness. Use composite marks combining words with graphics for distinctiveness, and ensure consistent use to build your brand’s reputation.
As a business owner, one essential part of growing your business is protecting your brand. One effective way to do this is by owning registered trade marks. However, there are cases where your trade mark may not be registrable, such as if your mark has only descriptive words. Without a unique and recognisable trade mark, you leave your brand vulnerable to being copied by competitors. This article will explain how you can avoid overly descriptive trade marks when applying for trade mark registration.
The Trade Mark Registration Process
Having a registered trade mark provides you with the exclusive right to its use, excluding other businesses from employing the same or similar mark as yours. Registered trade marks can include:
- logos;
- words or business names;
- colours; and
- sounds.
However, to register, you must first apply to IP Australia, Australia’s trade mark authority. The organisation will examine your application to ensure the proposed mark meets relevant criteria. Finally, your trade mark registration will be made publicly available for opposition, and if it is unopposed, it will be officially registered.
The Relevance of Descriptive Words
‘Descriptiveness’ is part of IP Australia’s criteria when evaluating your trade mark application. If your mark is purely descriptive, it is likely to be denied. Here, descriptive words are anything used to outline your good or service’s main traits, such as its:
- quality;
- geographical location; or
- generic appearance.
An example of a descriptive mark may be a phrase such as ‘Fast Motors’ for a motor dealer.
IP Australia denies trade marks with only descriptive words to preserve fairness. These terms are often used commonly within particular industries or across businesses, resulting in unjust outcomes if only one business can register a trade mark for the word. In the above example, ‘fast’ is likely a term many motor dealers may use to describe their product.
Tips to Avoid a Descriptive Trade Mark
Avoiding purely descriptive words in your trade mark will increase your chances of success. Below, we outline three ways you can limit your use of description or, alternatively, improve your chances of registration with a descriptive mark.
Unique and Distinctive Wording
The clearest way to limit your use of descriptive words is to blend them with terms that show your business’s distinctiveness. Although you don’t need to erase using adjectives entirely, you can consider using ones not commonly associated with your industry. For instance, instead of trying to protect ‘sweet desserts’, a phrase like ‘Jane’s Mystical Treats’ shows you occupy a distinguishable position in the market.
Another way of incorporating distinctive wording is by using nonsensical or random words that do not actually exist. Words like ‘Xerox’ (the printing company) are unique, allowing your business to secure a trade mark and be more memorable to consumers.
Composite Trade Marks
Composite trade marks are marks with both a visual and word element. You may find this helpful as it allows you to focus on making the graphic part more unique and recognisable to support the overall distinctiveness of the mark. Similarly, other stylised elements, such as colouring, can make your brand stand out despite there being descriptive words.
Consistent Use
If your trade mark is primarily descriptive, it may be so commonly used and well-recognised that it has developed a strong brand reputation. In these cases, there is a chance you can use and enforce it as your trade mark.
However, without a trade mark registration, you must show that your mark has a reputation for being associated with the relevant good or service. In general, having a distinct trade mark and continuously using it commercially is more advantageous.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Registering your trade mark is essential to protecting your brand and growing your business. However, if your mark has primarily descriptive words that do not distinguish your good or service, registration may be more unlikely. Some ways to avoid this issue are:
- using unique, brand-new or distinctive wording;
- considering composite trade marks with both written and visual elements; and
- building a clear reputation with consistent trade mark use, if your mark is descriptive.
If you would like assistance with registering your trade mark, contact LegalVision’s experienced trade mark lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
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