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 is your calling card, differentiating your product from other traders. Creating a unique and memorable trade mark can be challenging, time-consuming and costly.

It is then important that any prospective trade mark owner knows the basic rules that determine whether or not IP Australia will register their trade mark. We set out below how the Trade Marks Act 1995 (Cth) defines a trade mark, the presumption of registrability and the grounds on which IP Australia rejects an application.

What is a Trade Mark?

Section 17 of the Trade Marks Act 1995 (Cth) (the ‘Act’) defines a trade mark as any sign an individual uses or intends to use, to distinguish their goods and services from another. The definition is exhaustive and lists all the pre-conditions that someone must satisfy before their sign qualifies as a trade mark. Section 6 broadly defines the term “sign” to be any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

The Presumption of Registrability

Under section 33 of the Act, all trade marks are considered registrable unless the Registrar is satisfied that the individual did not make the application following the Act and Regulations, or there are other grounds. The Registrar will be satisfied if he or she is persuaded of the matter on the balance of probabilities (Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 at 504). Simply, the Registrar must be more satisfied than not that a mark warrants rejection before refusing the application.

Can the Presumption Be Displaced?

Commonly, the Registrar refuses a trade mark application on the following grounds:

  1. The trade mark is not capable of distinguishing the goods or services in question because it refers to the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the goods/services.
  2. The trade mark is identical or deceptively similar to another trade mark with claims an earlier priority date and is registered in respect of a similar class of goods and/or services.
  3. The trade mark contains prohibited or proscribed signs e.g. scandalous matter, obscene or course language, profanity or a mark that is prohibited under legislation.
  4. The trade mark cannot be graphically represented (this is most relevant to sensory marks such as sounds and smells).
  5. The trade mark is likely to mislead or deceive consumers by e.g. suggesting a connotation, association or endorsement of another trader or person.

Questions? Get in touch with LegalVision’s trade mark lawyers on 1300 544 755.

Vanja Simic

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