What Can and Can’t Be Registered as a Trademark?

There is often a lot of confusion and misinformation surrounding the topic of what and what cannot be registered as trademarks. Here at Mark My Words, people often asked ‘What can I trademark?’. Many people are unsure as to whether it is possible to trademark their birth names, colours or even symbols. We have put together a guide to help you gain a better understanding of what can and can’t be registered as a trademark.

What Can you Register as a Trademark?

A trademark refers to any ‘sign’ that is used to distinguish the goods or services from one trader to another. A registered trademark gives the owner exclusive rights to the use of that mark and the right to take legal action against anyone infringing upon it. Trademarks can be anything from a simple word, name or phrase, to more abstract ‘signs’ such as shapes, images, sounds, aspects of packaging, sometimes hashtags,colours or even smells. Although it’s highly unusual to register scents as trademarks, it is possible under Australian law, so long as it’s used to identify and differentiate the goods or services of the trader in question. Registered trademarks are treated as property and can be purchased, sold or licensed to third parties.

What Can’t you Register as a Trademark?

Some marks are virtually impossible to register. Descriptive words for instance, are unlikely to be granted registration by IP Australian (the governing body of trademarks). By way of an example, if you attempted to file a trademark application for the word ‘Table’ in relation to tables, it would not be approved. The word is far too descriptive.

The Trade Marks Act 1995 provides that you cannot register purely descriptive words and also prohibits registration of marks deemed to be contrary to law or scandalous by nature. Some emblems for example, are under the protection of other forms of legislation and therefore cannot be registered as trademarks. A good example of such protection would be the Red Cross emblem. Unless the applicant had ministerial consent, filing a mark in Australian that uses a cross of equal sized arms, would necessitate a legal endorsement to stipulate that the applicant agrees not to use the cross in red on a white/silver background or white/silver cross on a red background.

Is it True I Can Register Colours, Shapes, Sounds and Even Smells?

As with the more common marks of names and logos, you may also trademark a colour, sound, shape or smell if one those is used an identifiable ‘sign’ to differentiate your products and services.

Difficulty can arise from trying to register single colour marks or fonts because it is likely other traders would have a legitimate need to use the same colour or fonts for similar products and services in the marketplace. In these circumstances, the applicant would be required to display evidence that the colour, or font is capable of such distinction.

What are Some Examples of Non-Traditional Trademarks?

Some examples of non-traditional trademarks include:

Smell trademarks: In Australia there is currently only one registered scent trademark. It is a registration for a mark that consists of a Eucalyptus Radiata scent for golf tees. (e.g. golf tees that smell like Eucalyptus)
Colour trademarks: Cadbury has marks registered for their distinguishing ‘purple’ colour and Surf Life Saving Australia has registrations for the red and yellow synonymous with their organisation– including their uniforms.
Sound trademarks: McCain Foods is an example of a company that has sought protection of their sounds, including registering a mark to protect the words ‘Ah McCain’ followed by a ping sound at a very high pitch and followed by the words ‘You’ve done it again’.
Another great sound mark example comes from O’Brien Glass, where they have registered a mark for the certain way in which they advertise their brand. The protection covers the vocal harmonisation of the letter O, which is then followed by their company name O’Brien – it is rendered as ‘O’, ‘O’, ‘O’, ‘O’BRIEN’.
Shape trademarks: Toblerone Chocolate bars have registered the shape of their bars and the famous Weber barbecue is also a registered shape make in Australia.

The most unusual trademarks come in the form of scent marks. While they are recognised in Australia, as noted there has only ever been one successfully registered to date.

Contact Mark My Words for Trademark Registrations

The team at Mark My Words, have been helping businesses – of all sizes – to successfully register their trademarks for many years. We understand that your primary focus is on the day to day running of your business and don’t want to be bogged down with the nitty-gritty of intellectual property protection. We provide independent and practical advice surrounding all aspects of trademark registration and legalities.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.