Trade mark registration is an essential step to gaining exclusive rights and protect your business’ branding. However, IP Australia will not register every trade mark. As a result, it is important to know what trade marks you can and cannot register to maximise your chances of a successful application. This article will outline some key reasons IP Australia uses when rejecting a prospective trade mark.
Generic or Descriptive Trade Marks
Usually, you cannot register a trade mark with words that other people are likely to want or need to use in connection with their products. This is because, if you were to register such a trade mark, you have legally enforceable rights to stop others from using it or alike marks for similar goods or services. If IP Australia allowed one person to have a monopoly over words commonly used in connection with the goods or services, this would be unfair.
The difficulty of overcoming the objection depends on whether the examiner believes there is no extent to which your mark can distinguish your goods or services or if your mark to some extent, although insufficient, is able to distinguish your goods or service.
For example, it would be unfair to allow one business to call themselves Sydney Dry Cleaners and stop their competitors from doing the same. The phrase ‘Sydney Dry Cleaners’ is an accurate description that could apply to many dry cleaning businesses. Therefore, other traders in the same industry will likely want to use those words.
In some cases, you may possibly overcome this descriptiveness issue by providing evidence to IP Australia that proves your use of the trade mark.
Trade Marks and Signs Prohibited by Law
Trade mark law in Australia precludes certain signs from being registered as trade marks. These signs include well known national emblems and flags, such as the Geneva red cross or red crescent. Other trade marks that you cannot register include marks that may mislead consumers or marks that contain specific words, such as ‘Austrade’, ‘CES’, ‘Olympic Champion’, ‘Repatriation’, ‘Returned Airman’, ‘Returned Sailor’ and ‘Returned Soldier’.
Continue reading this article below the formTrade Marks Similar to Existing Trade Marks
If a trade mark is deceptively similar to a registered trade mark, it will be difficult to register. This occurs where consumers are likely to be confused between two trade marks and as a result, they conflict.
For example, suppose there is a registered trade mark for Happy Dentist concerning dental services, and you want to file Happy Dental in the same services. In that case, IP Australia is likely to object to your application based on a conflict.
However, it may still be possible to register a trade mark that conflicts with a registered trade mark. You can overcome a conflict objection by proving to IP Australia that you:
- used your trade mark before the filing date of the registered trade mark; or
- honestly traded and used your trade mark alongside the registered trade mark
In some instances, you may be able to use alternative strategies to overcome a conflict. For example, these include:
- amending your goods and services (so that your mark no longer conflicts with the registered trade mark);
- requesting consent from the registered trade mark owner to use your trade mark; or
- removing the registered trade mark (if the owner has not used the trade mark for at least three years).
Consent for Use
If you believe that the cited mark that appears to be similar to yours is not a commercial conflict (meaning that the two businesses do not or would not operate as competitors) you may choose to seek consent from the owner of the mark. Be careful though, this might also work against you as it might alert the owner to the existence of your mark and get them to oppose to your registration. It can be useful in these cases to speak to an experienced trade mark lawyer to help negotiate on your behalf.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Scandalous Trade Marks
Trade marks that are ‘scandalous’ are not registrable. IP Australia may have refused your trade mark if they think that the ordinary person would regard it as:
- shameful;
- offensive; or
- shocking.
IP Australia will consider a trade mark as scandalous where the trade mark is contrary to morality or crude in nature. Similarly, IP Australia will not approve trade marks that are defamatory or discriminate against a particular group or community.
For example, IP Australia may consider a trade mark that:
- contains profanities;
- is offensive towards a religious group; or
- contains sexual connotations as a scandalous mark.
Key Takeaways
There are several reasons why IP Australia might have refused your trade mark. Some of the main reasons are because your proposed mark was:
- generic or descriptive;
- reflective of a prohibited sign;
- similar to an existing trade mark; or
- scandalous.
Knowing these potential pitfalls is core to ensuring that you can successfully register your trade mark and safeguard your brand.
If you would like assistance regarding a trade mark objection, 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.
Frequently Asked Questions
IP Australia will refuse applications for ‘scandalous’ trade marks, which are marks that an ordinary person might consider to be shameful, offensive, or shocking.
IP Australia is the body that administers intellectual property rights in Australia, including trade marks, registered designs, patents and plant breeder’s rights.
If your trade mark is too similar to another trade mark, you have several options. You can try to show that you used your trade mark before the other trade mark was registered or show that you have been honestly using your trade mark alongside the other trade mark. You could also seek consent from the trade mark owner to use your trade mark, change your goods or services or seek removal of the registered trade mark.
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