“Can you trade mark a word or phrase?” is a frequently asked question. The short answer is yes, sometimes. The long answer is that there are certain legal requirements that limit the kinds of words and phrases that can be trade marked. This article explains the thresholds that your word or phrase will have to meet so your trade mark is not objected to.

What is a Trade Mark?

A trade mark is a sign which is used to distinguish a unique product or service. It doesn’t need to be a logo, though this often springs to mind when you think of trade marks. You might think of the McDonald’s golden arches or the Nike tick, but there are other multiple forms of trade marks. They could also be a word or phrase, or even a single letter, a number, smell, shape, picture, movement or aspect of packaging.

The Criteria For Trade Marking Words or Phrases

To qualify for trade mark protection,some legal requirements must be met. The major threshold is that the mark must be distinctive. This comes with two related requirements.

1. It Must Not Be Descriptive

Other traders will have a legitimate need to use certain words or phrases to describe their own business.

For example, a baker attempting to trade mark the phrase “Hot Pies” would be unsuccessful. Other bakers have a legitimate need to describe their products using those words.

In other words, the law prevents the trade marking of words or phrases that other traders would need. You should make sure that your word or phrase doesn’t describe the kinds of products or services you offer.

2. It Must Not Be the Same or Similar to Another Trade Mark

Trade marks provide the owner with the exclusive use of the mark within a category of goods or services. Therefore, you will not be able to register a word or phrase that is the same or deceptively similar to another registered mark. This protects the commercial interests of business while preventing consumers from being misled.

Before you apply for your word or phrase trade mark, do a thorough search of the register. This will help avoid the risk of a failed trade mark application down the line.

Tips to Avoid Common Objections

1. Use a Word or Phrase From a Foreign Language

When choosing a foreign word or phrase to trade mark, look at how commonly understood the translation is in English. If the word or phrase is well-known in its English translation, it will not be distinctive enough to qualify for a trade mark.

The use of “belle” in the beauty industry is an example of a problematic foreign word. “Belle” is unlikely to be registered as a trade mark as it is quite commonly understood to mean beauty in French. However, if you can find a word or phrase that is not usually known well in English, it may be enough to get protection.

For example, in 2013, courts found that the Italian words, “Oro” and “Cinque Stelle”, which means gold and five stars respectively,  were distinctive enough. Although their English translations are commonly used in Australia, the court held that the Italian words did not convey this same meaning.

Another (often overlooked) example is the multitude of brands using figures from Greek mythology, such as Olympus, Nike and Ajax.

2. Use Made-Up Words

Using a made-up word will be the best way of ensuring you meet the distinctiveness requirement. If it means nothing, it is highly unlikely that anyone could say it is descriptive of the good or service offered.

Examples include “Kodak” or the recently made up slogan, “Ban the Single Use Prime Minister”

3. Use Words or Phrases That Aren’t Associated Normally With a Category of Goods

Even though the word or phrase is used commonly, if it is not usually in your specific classification of goods and services, it is distinctive.

An example of this is Apple for computers, or Nike’s “Just Do It”.

Key Takeaways

Trade marks can be words or phrases, so long as they are distinctive. This means they must not be too descriptive, or similar to another trader’s mark. If you are interested in registering a trade mark for a word or phrase, contact  LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Amelia Coutts

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