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.

COVID-19 Business Survey
LegalVision is conducting a survey on the impact of COVID-19 for businesses across Australia. The survey takes 2 minutes to complete and all responses are anonymous. We would appreciate your input. Take the survey now.

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.

The majority of our clients are LVConnect members. By becoming a member, you can stay ahead of legal issues while staying on top of costs. For just $199 per month, membership unlocks unlimited lawyer consultations, faster turnaround times, free legal templates and members-only discounts.

Learn more about LVConnect

Need Legal Help? Get a Free Fixed-Fee Quote

If you would like to receive a free fixed-fee quote or get in touch with our team, fill out the form below.

Our Awards
  • 2019 Top 25 Startups - LinkedIn 2019 Top 25 Startups - LinkedIn
  • 2019 NewLaw Firm of the Year - Australian Law Awards 2019 NewLaw Firm of the Year - Australian Law Awards
  • 2020 Fastest Growing Law Firm - Financial Times APAC 500 2020 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review 2020 AFR Fast 100 List - Australian Financial Review
  • 2020 Law Firm of the Year Finalist - Australasian Law Awards 2020 Law Firm of the Year Finalist - Australasian Law Awards
  • Most Innovative Law Firm - 2019 Australasian Lawyer 2019 Most Innovative Firm - Australasian Lawyer
Privacy Policy Snapshot

We collect and store information about you. Let us explain why we do this.

What information do you collect?

We collect a range of data about you, including your contact details, legal issues and data on how you use our website.

How do you collect information?

We collect information over the phone, by email and through our website.

What do you do with this information?

We store and use your information to deliver you better legal services. This mostly involves communicating with you, marketing to you and occasionally sharing your information with our partners.

How do I contact you?

You can always see what data you’ve stored with us.

Questions, comments or complaints? Reach out on 1300 544 755 or email us at

View Privacy Policy