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Trade mark registration is an essential step to protect your business’ branding. However, IP Australia will not register every trade mark. It is important to know what trade marks you can and cannot register. This article outlines some of the categories of trade marks that you cannot register and explains why IP Australia may have refused your trade mark.

Generic or Descriptive Trade Marks

Trade marks that contain words that other people are likely to want or need to use in connection with their products are difficult to register. In many cases, these trade marks will not be registrable at all. This is because it would be unfair to allow one person to stop other traders from using words that other traders ought to be able to use. 

As an owner of a registered trade mark, you have legally enforceable rights to stop others from using that trade mark or similar trade marks connected with 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. 

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. IP Australia is unlikely to register a trade mark that contains a geographical location, such as Sydney Dry Cleaners or Gold Coast Flowers.

In some cases, it is possible to overcome this descriptiveness issue by providing evidence to IP Australia proving your use of the trade mark. If you have been using your trade mark for a significant period of time, and have built a strong reputation in association with the trade mark, evidence of use may be a good strategy to overcome a descriptiveness objection. 

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’.

Trade Marks Similar to Existing Trade Marks

If a trade mark is deceptively similar to a registered trade mark, it will be difficult to register. If consumers are likely to be confused between two trade marks, then the two marks will 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). 

If you received a conflict objection from IP Australia, you should engage a trade mark lawyer or attorney to overcome the conflict. As outlined above, there are a few strategies to overcome an objection. An experienced trade mark lawyer will be able to advise which option suits your circumstances.

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. If you are looking to register a trade mark and are concerned about whether IP Australia will approve the trade mark, it is best to seek expert advice. To find out more about successfully applying for a trade mark, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page. 

Frequently Asked Questions

What are scandalous trade marks?

IP Australia will refuse applications for ‘scandalous’ trade marks. These are trade marks that an ordinary person might consider to be shameful, offensive or shocking. 

What is IP Australia?

IP Australia is the body that administers intellectual property rights in Australia, including trade marks, registered designs, patents and plant breeder’s rights.

What can I do if my trade mark conflicts with another trade mark?

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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