If you file a trade mark application, there are various reasons why IP Australia may reject it. However, the trade mark registration process can be lengthy and costly. Therefore, it may be helpful to consider the specific steps you can take to minimise the risk of this happening. In this article, we will provide some tips to help you prevent IP Australia from rejecting your trade mark application.
Avoid Prohibited Signs and Scandalous Material
Under the Trade Marks Act, there are specific signs you may not register as a trade mark. This can include:
- national flags;
- armorial bearings;
- emblems associated with intergovernmental organisations;
- official signs;
- hallmarks; and
- abbreviations and names of international intergovernmental organisations.
Similarly, IP Australia is likely to reject a trade mark application that contains scandalous material or the use of material that contravenes the law. This will include trade marks that contain:
- profanity;
- racial or sexist slurs; or
- signs that incite violence.
Provide an Accurate Graphical Representation
When drafting your trade mark application, you must include a graphical representation of your trade mark. For example, if you want to register your business logo as a trade mark, you must provide an image of your logo. If you cannot represent your trade mark graphically, IP Australia is likely to reject it.
If you attempt to register a word, phrase or image, there will be no issues with including a graphical representation. However, it can get more complex for applicants who wish to register a trade mark for a:
- sound;
- shape; or
- scent.
In this instance, you may have to provide a digital file of the sound or an actual sample of the three-dimensional object. In addition, you will likely need to provide a concise and accurate written description of the trade mark entered to endorse your application.
Continue reading this article below the formEnsure Your Trade Mark is Capable of Distinguishing Your Business
Trade marks help differentiate your business’ goods and services from others in the market. If consumers cannot distinguish your trade mark from others, IP Australia will likely reject your application.
A trade mark can be incapable of distinguishing your goods and services if it contains:
- descriptive phrases that merely indicate the nature, quality, quantity, geographic origins or intended purpose of your goods and services;
- ordinary descriptions that business owners and consumers widely use in your industry; and
- the time your goods were produced or the time you delivered your services.
However, this does not mean that you must avoid descriptive phrases altogether. For example, your application’s descriptions of your product’s quality or quantity can help distinguish your business if you pair the description with a unique image or word combination. To use the same example as above, the South Australian winemaker can accompany the phrase ‘Barossa Valley Wine’ if they accompany it with a unique business logo.
If you are unsure whether you can distinguish your trade mark from other business goods and services, it would be wise to speak with an experienced trade mark lawyer.
Your business’ brand represents your values, identity and reputation. Learn how to create a successful brand and protect it.
Avoid Misleading or Deceptive Claims
IP Australia can reject your application if your trade mark contains some connotation that is likely to deceive or cause confusion among consumers. For example, your trade mark might imply that the quality of your goods meets a certified standard when it does not. In this instance, IP Australia can reject your application. In this case, to avoid rejection, you should ensure that your trade mark conveys a clear and accurate message about your business’s goods and services.
Conduct a Trade Mark Search
IP Australia can also refuse your trade mark application if:
- it is substantially identical or deceptively similar to an existing trade mark; and
- you will use the trade mark in respect of goods or services that are similar or closely related to those covered by the other registration.
To avoid applying for a trade mark that is identical or similar to an existing one, you should conduct a comprehensive search of the Australian Trade Mark Search. By entering the details of your desired trade mark into the Search, you can determine whether a similar or identical trade mark already exists. If so, you should consider adjusting your application to minimise your chances of IP Australia rejecting your application.
Key Takeaways
There is no foolproof method to guarantee that IP Australia will not reject your application. However, you can minimise your chances of facing rejection by:
- avoiding trade marks that consist of prohibited signs and scandalous material;
- providing an accurate graphical representation of your mark in your application;
- ensuring your trade mark is capable of being distinguished from other goods and services;
- avoiding claims that are likely to mislead or deceive consumers; and
- conducting a search of the Trade Mark Register to ensure your trade mark is not similar or identical to an existing trade mark.
If you are thinking of registering your trade mark, our experienced trade mark lawyers can assist 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.
Frequently Asked Questions
You should avoid registering a trade mark that consists of a national flag, armorial bearings, emblems associated with intergovernmental organisations, or other official signs and hallmarks.
A standard trade mark application costs $250 per class of goods and services. You can find a comprehensive list of IP Australia’s fees on their website.
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