Trade marks likely to be refused by IP Australia
Not every trade mark is capable of being registered. IP Australia considers whether a trade mark is able to be distinguished from other traders. This means it has to be somewhat distinctive. The more unique, the better. So what kind of trade marks are less likely to be accepted by IP Australia?
Common words, phrases and images
If your trade mark describes the goods or services you are claiming, it is unlikely to be accepted by IP Australia. For example, “Global” for travel services, or “Yum” for food products. Generally, if another business is likely to need to use that word, phrase or image, it probably won’t be accepted by IP Australia. If it is only somewhat descriptive but you have been using the trade mark for a few years and gained a reputation in it, you might be able to show IP Australia evidence of use to overcome an objection.
Common surnames
Surnames are difficult to register if they are common because other traders are likely to want to use their surname for their own business. Common surnames like “Jones” or “Williams” are likely to face this objection. Again, if you have a reputation over a number of years in this trade mark, you might be able to overcome this issue with evidence of use.
Geographical names
Location names are hard to protect because others might legitimately want to use a location to describe the origin of their own goods or services. If you have selected your brand name and found out later that it is a geographical name, you may be able to show evidence of use to overcome an objection.
Hashtags
Hashtags are commonly used on social media platforms to categorise and search messages. They usually cannot be protected by a trade mark registration.
Generic terms
If your trade mark is for a brand that has become generic over time (i.e. is now used to describe your goods or services), then you may face difficulty getting it registered.
Simple shapes
Any shape trade mark needs to be distinctive. You cannot register a simple shape that other traders are likely to use. For example, a shape of a shoe is unlikely to be registered as a logo for the sale of shoes.
Prohibited symbols
There are certain symbols that cannot be registered by law. This can include defence force logos and words (for example, ANZAC), terms like “bank”, symbols of the Red Cross (like the cross symbol itself), or flags of foreign countries.
Offensive words or images
Scandalous trade marks may be rejected by IP Australia. This can include swear words or other offensive material.
Misleading or confusing words or images
If IP Australia considers that your trade mark would mislead or confuse consumers, they may reject it. In that instance, you might have to prove you have a reputation in the trade mark and that consumers are unlikely to be misled or confused.
Registering these kinds of trade marks is not impossible, but will ordinarily be rejected at first instance by IP Australia (often under grounds like section 39, section 41, section 42, and section 43 of the Trade Marks Act 1995 (Cth)). This means you will need to overcome the objection that IP Australia has raised, often by submitting legal arguments or evidence of use to show reputation in the trade mark.
If you have received an objection from IP Australia for your application, reach out to me for an initial opinion about the options available to you.