Trade mark registration is an important step that businesses should take to protect their brands. However, not every trade mark can be registered. In order to understand how to protect your business, it’s important to know what trade marks can and can’t be registered. This article outlines some of the categories of trade marks that can’t be registered, and gives an explanation as to why you may have had your trademark refused by IP Australia.

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 own products are difficult to register. In many cases, these trade marks will not be registrable at all. The reason for this is that it would be unfair to allow one person to stop other traders from using words that other traders ought to be able to use.

Registering a trade mark provides the trade mark owner with a legally enforceable right to stop others from using that trade mark, or similar trade marks, in connection with similar goods or services. If the trade marks office allowed one person to have a monopoly over words that are 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. That is a valid description that could apply to many businesses, and it’s likely that other traders will want to use those words.

In some cases, it is possible to overcome this problem by providing evidence of use of the trade mark, that shows that when consumers see the trade mark they associate it with the trade mark owner’s business and no other business.

Certain signs, and trade marks prohibited by law

There are certain signs that are protected by law, and can’t be registered as trade marks. These signs include well known national emblems and flags, such as the red cross or red crescent. Other trade marks that cannot be registered include marks that may mislead consumers, or marks that contain certain words including ‘Austrade’, ‘C.E.S.’, ‘Olympic Champion’, ‘Repatriation’, ‘Returned Airman’, ‘Returned Sailor’, and ‘Returned Soldier’.

Trade marks similar to existing trade marks

If a trade mark is similar to a previously registered trade mark it will be difficult to register. If it is likely that consumers would be confused between two trade marks, then the two marks will be in conflict. It may still be possible to register a trade mark that conflicts with a previously registered trade mark if it has been used before the filing date of the registered trade mark. During examination the trade marks office will request evidence of use showing this.

Scandalous trade marks

Trade marks that are ‘scandalous’ are not registrable. A trade mark that would be regarded by the ordinary person as shameful, offensive, or shocking may be refused registration. This is typically the case where the trade mark is contrary to morality.

Similarly, trade marks that are defamatory towards a particular portion of the population will be refused registration.

Conclusion

If you are looking to register a trade mark and are concerned about whether it is registrable, it’s best to seek expert advice. Contact LegalVision on 1300 544 755 and get in touch with a trade marks specialist.

Daniel Smith

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