What is the Presumption of Registrability?

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Table of Contents

• What is a Trade Mark?
• What is the Presumption of Registrability?
• What is Included Under the Presumption of Registrability? 
• When Does the Presumption Not Apply?
• Key Takeaways

Your trade mark is critical in developing your brand’s identity. Whether you provide goods, services or a combination of the two, your trade mark differentiates your product from other traders. Creating a unique and memorable trade mark can be challenging, time-consuming and costly. Therefore, it is important that you, as a trade mark owner, know the basic rules that determine if IP Australia will register your trade mark. This article will explain the definition of a trade mark, the presumption of registrability and when IP Australia can reject an application.

What is a Trade Mark?

Legally, a trade mark is any sign or symbol you use or intend to use to distinguish your product from another. Your sign can include or be any of the following:

• words;
• names;
• signatures;
• labels;
• shapes;
• colours;
• sounds; or
• scents. 

You also need to follow the requirements in the Trade Marks Act 1995 (the ‘Act’) to ensure your sign qualifies.  

What is the Presumption of Registrability?

The presumption of registrability outlines that your trade mark application is valid and eligible for registration unless proven otherwise. In Australia, this means that you will be able to register your trade mark except if IP Australia is satisfied your application does not follow the requirements set out under the Act. 

What is Included Under the Presumption of Registrability? 

To make sure your trade mark is protected by the presumption of registrability, consider the following factors:  

1. Examination Process: IP Australia will thoroughly examine your trade mark application to ensure compliance with legal standards. They may reject it if there are grounds for refusal, such as the mark being too descriptive, lacking distinctiveness, or being alike to existing trade marks.
   
2. Legal Standards: In Australia, your trade mark in Australia must meet specific criteria. Your mark should not be simply descriptive of your goods or services, but instead, it should be unique, either visually or through use.
   
3. The Role of Other Businesses: Your competitors can oppose your trade mark application/registration. If they wish to do so, they must provide strong evidence or valid reasons as to why your mark should not be registered. They need to demonstrate that your mark does not satisfy legal requirements for registration, such as lacking distinctiveness or being too similar to an already registered trade mark. 

When Does the Presumption Not Apply?

IP Australia may raise several grounds or reasons to refuse a trade mark application. For instance, they might conclude that your trade mark:

• is identical or deceptively similar to another trade mark with an earlier priority date that is also registered for similar goods or services;
• only describes the main characteristics of your product, such as its quality or geographical origin rather than distinguishing your goods or services;  
• contains prohibited signs, such as scandalous matter, obscene language or offensive images, which are all unlawful;
  
• is not graphically represented, which is especially relevant for sensory marks like sounds and smells; or
  
• misleads or deceives consumers by suggesting an association with or endorsement of another person or trader. This is likely to cause confusion among customers.

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Key Takeaways

Registering a trade mark is an important part of your brand identity. You are protected by the presumption of registrability, which allows you to register your trade mark as long as you properly follow all legal requirements. However, it is also essential that you understand when your trade mark application can be denied, which includes when it is:

• too similar to an existing trade mark;
• not unique enough to your product; or
• inappropriate or misleading.

If you would like assistance regarding trade mark applications or have any further questions, contact our experienced trade mark lawyers 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.