What can’t be a trade mark and why?

If you have read anything about trade marks in Australia, you will know that registration is not an automatic or guaranteed right. Trade mark legislation in Australia operates to ensure the market is not too restricted or affected by applications that are vexatious or applications that may have an onerous impact on the use of generic or well-known words. This can be seen in the requirements that need to be met when an examiner from Intellectual Property (IP) Australia is processing your application.

The same or similar?

One of the main reasons why a trade mark can not be registered is because a conflict exists with a trade mark that was filed at an earlier date than your own. This means that a trade mark may already exist and cannot be granted again. The purpose of a trade mark is to ensure one party has exclusive use of a particular sign, which means that no more than one party can own the trade mark.

Prohibited signs

An international treaty, The Paris Convention for the Protection of Industrial Property was enacted, requiring certain signs be protected. These protected signs may include abbreviations of common international organisations, official signs, flags, emblems or hallmarks. The signs cannot be registered as a trade mark so as to ensure consistency and authority of these already well-known signs.

Geographical names

It is generally difficult to register geographical names, as it is hard to prove that the use of this name is particularly required to describe the good or service you are providing. Many traders may need to use geographical names in their everyday business and by allowing a trade mark to be registered, other businesses will be negatively impacted by this onerous restriction.

Generic words

Words that are commonly used in trade may not be able to be registered as a trade mark. Similar to the reasons described for geographical names, once generic words are registered, this will prevent other traders from using these common terms, although it may be necessary for their business. Words like car, hairdresser, restaurant or repairs are words that alone are unlikely to be successful in a trade mark application.

Legislative restrictions

Some signs are unable to be registered, as there are other legislative provisions that would prevent it. This is particularly the case when it comes to the naming and labelling of wine. There are certain provisions that relate to the product and geography, which may restrict or add certain conditions to the registration of a trade mark.

Conclusion

There are many aspects of the trade mark application requirements that may prevent it from being registered. Trade mark registration is not an automatic right and may be refused according to the circumstances described above. One of our trade mark lawyers at LegalVision can guide you through the process and advise you on the best pathways to success in your application!