In Short
- National symbols, such as flags and armorial bearings, cannot be registered as trade marks.
- Common, generic, or descriptive terms (e.g., ‘premium’ or ‘fresh’) are generally not eligible for registration.
- Geographical names, common surnames, scandalous material, and certain financial terms are also restricted.
Tips for Businesses
When choosing a trade mark, ensure it is unique and distinct to avoid rejection. Avoid using common names, generic terms, or national symbols. If you’re considering a geographical name or surname, establish strong brand recognition before applying. A distinctive mark will protect your brand more effectively.
As a business owner, you may want to protect your brand by registering a trade mark. A trade mark is any sign you use to distinguish your goods and services from those of other businesses, such as a business name or logo. However, it is crucial to understand that not all signs can be registered as a trade mark. This article will explore the types of signs that are generally prohibited or challenging to register as trade marks.
National Symbols
Under international law, Australia prohibits the registration of certain national symbols as trade marks. These include:
- flags or seals used to identify different countries or regions;
- armorial bearings;
- hallmarks;
- abbreviations and names of intergovernmental organisations; and
- foreign national symbols.
As these signs are internationally recognised as official national symbols, allowing one particular trader to register these trade marks would undermine their authority and potentially mislead consumers. Consequently, IP Australia will not accept applications incorporating these protected national symbols.
Common and Generic Signs
Trade marks incorporating common or generic signs may not be accepted by IP Australia if they fail to distinguish your goods or services from those of other parties in the market. For example, common or generic signs may include:
- signs indicating the type of goods or services provided, such as an image of a t-shirt for a clothing brand;
- quality descriptors such as ‘fresh’ for fruit and vegetables, or ‘premium’ for a luxury goods brand;
- quantity indicators such as ‘1GB’ for cloud storage services; and
- purpose descriptors such as ‘ClearSkin’ for skincare products.
Geographical Names and Common Names
IP Australia may reject trade marks that are not distinct enough, such as those using a geographical name or common surname. This is because:
- other traders may have a legitimate desire to use geographical names, such as ‘Melbourne Coffee’ for cafes in Melbourne; and
- common surnames may be needed by other traders with the same name in the same or similar industries.
While these types of names are generally challenging to register as a trade mark, there are some exceptions. You might successfully register a trade mark containing a geographical name if you’ve used it extensively for an extended period and established a strong reputation. Similarly, less common surnames may be more easily registered as trade marks.
The key consideration is whether the geographical name or surname is capable of distinguishing your goods or services from those of other traders. Each application is assessed on its individual merits, taking into account factors such as the distinctiveness of the name and its relevance to the goods or services in question.
Scandalous Signs
IP Australia will not accept trade marks that contain scandalous material. While there is no strict definition of what constitutes ‘scandalous’, it generally includes:
- profanity;
- racial slurs;
- sexist commentary;
- blasphemy; and
- signs inciting violence or criminal activity.
The key consideration is whether the trade mark would be likely to offend a significant section of the community. In any event, it is wise to choose trade marks that are in good taste and considerate of others. Not only does this increase the likelihood of a successful trade mark registration, but it also helps ensure your trade mark attracts rather than deters potential customers.
Signs Relating To Banking And Financial Services
Some signs related to banking and financial services are restricted and should be avoided in trade mark applications. These restrictions apply specifically to applications that include financial services under class 36 of the Trade Mark Classification Search.
These restricted words and expressions include:
- ADI or Authorised Deposit-Taking Institution;
- bank, banker or banking;
- building society;
- credit society;
- credit union;
- friendly society (concerning the conduct of a financial business); and
- any other word or expression that is similar to these terms.
If you want to use any of these signs as part of your registered trade mark, you should first seek permission from the Australian Prudential Regulatory Authority (APRA).
Your business’ brand represents your values, identity and reputation. Learn how to create a successful brand and protect it.
Key Takeaways
When developing your trade mark, avoid using national symbols, standard or generic terms, geographical names, common personal names, scandalous material, and restricted financial terms. Instead, aim for unique and distinctive marks that will clearly distinguish your goods or services from those of other businesses in the market.
If you have any questions about registering a 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
It is highly unlikely that IP Australia will register a trade mark that contains a foreign national flag, as flags are protected symbols under international law.
Yes, you can generally use the Australian flag in a trade mark without formal permission. However, you must ensure it is used in a dignified manner and reproduced accurately, with all symbolic parts identifiable.
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