What signs are difficult to register as trademark in Australia? When examining your application, you should consider whether your trade mark uses commonly-used descriptive terms, phrases or images. If it does it may not be accepted for registration.
Signs such as words or images which are ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of the goods and services to which your trade mark is to be used in connection with, will be difficult to register as trade marks. This is because these types of signs should be available for all traders to use to describe characteristics of their goods and services.
Geographical names – difficult to register as trademark in Australia
A geographic name is difficult to register unless it has been used extensively for goods or services for a long time. One of the basic considerations in examination is whether the proposed trade mark is a term that other traders will have a legitimate desire to use in connection with their own similar goods or services. Geographical names are likely to be terms other traders have a legitimate desire to use. This is usually because the name refers to the geographic origin of the goods or service.
It is especially true if the geographical region is known for a particular industry, for example Young is known for cherries; King Island for quality cheese. It also applies on more generic goods or services, like ‘Central Sydney Couriers’ for a courier service.
Surnames – difficult to register as trademark in Australia
Surnames are regularly used by traders in business. The more common the surname, the more likely other traders with the same surname will have a legitimate desire to use it on their own similar goods or services.
Registering geographical names and surnames
In case, your trade mark has been objected to and you can prove that it has been used and is functioning as a trade mark in the marketplace you may be able to register it. You need to prove that consumers and the public identify with this name as a trade mark, rather than a term that simply names a geographic origin or a person. You may need to do this by compiling and submitting evidence of use.
Examples of signs which would be difficult to register as trade marks
- Words which describe goods or services such as STRAWBERRY for drinks, WARM for heaters or GLOBAL for freight shipping services
- Commonly used words or phrases such as ULTRA WHITE for paper or ECO FRIENDLY for recycling services
- Common surnames in Australia such as SMITH or BROWN
- Common place names, particularly the names of cities, towns and suburbs or areas which are or have the potential to be associated with the goods or services you are claiming, such as ADELAIDE for car wash services or BASS STRAIT for seafood
- Abbreviations, acronyms, numbers or letters commonly used in relation to goods, such as MRI for medical services, 4×4 for vehicles or XS for clothing
- Commonplace, exact pictures or drawings of goods such as a sketch of an iron for irons or a photograph of a cat for pet food
If any of these things are combined with something that other people are unlikely to use, it could be easier to register. An example is if a photograph of a cat was combined with the phrase PRETTY CAT for pet food.
For your kindly reference.