What Cannot Be Registered As A Trade Mark?

Registering a trade mark is a smart move for any business wanting to build and protect a brand, stand out in the marketplace and ensure legally enforceable rights for their intellectual property.

But while there are plenty of things that can be registered as trade marks, there are also some things that aren’t allowed.

If you’ve got some concerns about the suitability of your intended trade mark, this article will help you identify the areas of risk. We’ll discuss which types of trade marks will definitely not be allowed as well as discuss some of the areas which are less certain.

A trade marks attorney can provide you with greater certainty as to the likelihood of a successful trade mark registration and can make recommendations for less risky choices, so if you have doubts or queries, please feel free to get in touch.

Words and Symbols That Cannot Be Registered as Trade Marks in Australia

It’s understandable why offensive or scandalous language or marks that are contrary to law will be prevented from being registered as trade marks, but there are also many other instances where certain words and symbols will be rejected.

Trade Marks That Would Be Contrary to Law

The law precludes certain words and symbols from being used in trade marks.  Examples include the Australian national flag, the Olympic Rings and the word ‘ANZAC’.

Scandalous or Offensive Trade Marks

Trade marks are administered by the Australian government and so in order to uphold their duty as representatives of the people, they need to ensure that any trade marks are either rejected or removed if they are scandalous or offensive.

That said, society and standards change over time and the meanings and associations of words and symbols are in a constant state of flux.  A word or symbol that was once deemed offensive may now be acceptable and similarly, there may be contexts where words or symbols which were previously acceptable may now be shocking.

An example of this is swear words.  Profanities are becomingly increasingly commonplace in Australia and some ‘bad taste’ words may now be considered for registration – provided they’re appropriate for the goods or services that they are directed to. 

Other situations where risky trade marks are unlikely to be accepted include:

• Words that display a lack of respect or contempt for sacred or religious things
• Words that invoke violence
• Words that condone racism

Some brands may actually benefit from having a scandalous term or crude colloquialism as their trade mark, but the process of getting it accepted by the Registrar is likely to be complex and lengthy, if even possible.

Descriptive Words or Phrases

If your application contains only purely descriptive words or phrases, it’s likely to be rejected.

Any descriptive words which describe the quality, purpose or any other description of a trade mark won’t be accepted.  The reason for this is that no trader should have an unfair advantage over another as a result of being able to register and enforce a common descriptive word or term. 

Examples of descriptive terms are ‘environmentally friendly’, ‘national’, ‘tasty’, ‘fresh’ and ‘secure’.

Descriptive words and abbreviations that are often used in relation to certain goods (for example ‘automatic’ for vehicles and ‘PET’ for plastic items) are also not allowed.

Overcoming objections based on purely descriptive trade marks is very difficult, often not possible. Essentially it requires the applicant produce extensive and persuasive evidence that demonstrates that descriptive term acts as a distinctive ‘badge of origin’ for the applicant’s goods or services and no-one else’s.

Commonplace Words, Phrases or Images

Just as descriptive words aren’t allowed as trade marks because they would give the owner a monopoly over the term and place others in their industry at a disadvantage, the same principle can apply to commonplace words, images, abbreviations, numbers and acronyms. Essentially, if an examiner finds another trader would likely desire to use that commonplace ‘sign’ genuinely and without improper motives an object will be issued. However, unlikely merely descriptive terms, these sorts of trade marks could have some distinctiveness to them and therefore can be overcome with evidence of use at a lower threshold than above.

Exact images of common goods are also not challenging (if not impossible at times) to register.  For example, a drawing of a camera as a logo for a camera shop would be rejected as a trade mark, as would be a photo of a car for a motor dealership. This is because other camera shop operators would likely desire to use a picture of a camera and a motor dealership likely a photo of a car.

Names

Getting a business name registered as a trade mark can be challenging.  It’s even more challenging – and for all intents and purposes, unlikely – when it contains geographical locations or common surnames such as ‘Wilson’, ‘Kelly’ or ‘Smith’ as other traders with those names, or originating from the same location would need to use those terms.

Some products or services also have an established association with a geographical location, such as Buderim for ginger or Barossa Valley for wine.  Therefore, it would be highly unlikely that a trade mark for a product containing these types of names could be registered. Particularly, if the goods/services don’t originate from that location. For example, a trade mark containing Barossa Valley for goods that are actually produced in Melbourne would be misleading.

Substantially Identical or Deceptively Similar Trade Marks

Any trade mark that is likely to cause confusion in the market or deceive consumers because it closely resembles another trade mark will receive an objection from the trade marks office.  The aim of trade mark registration is to protect a trader’s brand with legally enforceable rights, so anything that causes confusion will receive an examiner’s report – usually then requiring persuasive evidence of use to allow the mark to be accepted, or, the permission of the earlier trade mark owner. 

Given the myriad of trade marks in existence around the world, it can be tricky finding one that is new and unique.  You may find this article on how to choose a good trade mark helpful and remember, a comprehensive trade mark search is always recommended before any application is filed.

Restricted and Prohibited Words and Signs

There are numerous words, phrases and signs that are either restricted or prohibited, both on a national and international level.

The most well-known restricted words relate to financial services (trade mark class 36) and include the words ‘bank’, ‘credit society’, ‘ADI’ (authorised deposit-taking institution) and ‘credit union’.  Approval has to be given by the Australian Prudential Regulation Authority (APRA) prior to any trade mark application being registered.   This link to Common and prohibited signs as laid out by IP Australia gives more information on this issue.

Signs such as flags, hallmarks, official emblems and abbreviations of international intergovernmental organisations (eg INTERPOL) are also prohibited by international protocols.

In Conclusion

Before you file a trade mark application, you need to think about the eligibility of your chosen sign. 

Ask yourself:  does it contravene trade mark laws?  Does it contain scandalous, offensive, descriptive, commonplace or restricted words?  Are there any common names in it?  Is it deceptively similar to another trade mark in the nominated class of goods and services?  Does it contain prohibited words and signs?  

This is just a general guide to what can’t be registered as a trade mark, but for more specific advice and greater certainty about your intended trade mark, it’s worthwhile having a chat to a legal professional. Get in touch with our affordable trade marks attorneys at MMW Trademark Services today – we can help you with all aspects of trade mark search, registration, disputes and renewal.