The Trade Marks Act 1995 sets out a list of grounds for rejecting an application in sections 39 to 44. We’ve previously published on the most commonly invoked reasons for rejecting a trade mark, but there are other reasons a trademark application may be refused:

39. Trade mark containing etc. certain signs

40. Trade mark that cannot be represented graphically

42. Trade mark scandalous or its use contrary to law

43. Trade mark likely to deceive or cause confusion

Section 39: Prohibited or prescribed signs

There are no signs that are currently categorically prohibited under section 18 of the Trade Marks Act (which allows for regulation that certain signs are not to be used as trademarks), however some marks may be refused registration because they are similar to the following:

  • The words “Patent”, “Registered”, “Copyright”, “Protected International Trade Mark” the (amongst similar others);
  • “To counterfeit this is a forgery”, or words to the same effect;
  • The Arms, flag, or seal of the Commonwealth or of a State or Territory;
  • The Arms or emblem of an Australian city or town, or of a public institution or authority;
  • Signs prescribed by the World Intellectual Property Organisation (WIPO), including:

–   Flags/coats of arms of member states/countries

–   Emblems, badges etc of intergovernmental organisations

–   Badges of warranty and control, including hallmarks.

  • Other specifically prescribed signs under schedule 2 of the Trade Marks Regulations:

–   Austrade

–   C.E.S.

–   Olympic Champion

–   Repatriation

–   Returned Airman

–   Returned Sailor

–   Returned Soldier

Section 40: Signs that cannot be represented graphically

This mainly applies to non-traditional type trademarks, for example shapes, sounds, colours, movements, or gestures. For these marks, the application must include a clear and concise description of the sign that is the subject of the application.

Section 42: Scandalous or illegal trade marks.

A trademark application might be rejected for being too scandalous or reprehensible. It’s important to understand what kinds of applications might be rejected and for what reasons. After all, scandalous is so subjective that it could cover any range of issues and could change over time.

Section 43: Deceptive or confusing trade marks

Under the Trade Marks Act 1995, a trademark may be ‘deceptively similar’ or ‘likely to cause confusion’ if there is a very close resemblance to another mark. Trademarks that are very similar might lead to consumers buying the wrong product, which weakens the unpurchased brand’s unique identity. Those traders who copy other traders’ marks are essentially ‘free-loading’ off another trader’s built-up reputation.

To determine whether two marks are deceptively similar, they must be assessed side by side and in their entirety.

Conclusion

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.

Daniel Smith

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