Before you apply
Before applying for trade mark protection, you should make sure that you meet the eligibility requirements.
Are you eligible?
When you apply for a trade mark, the owner must be one of the following:
- an individual
- a company
- an incorporated association
- a combination of these
A business name or trading name is not acceptable as the name of the applicant. The owner(s) of the business registration would be the applicant. If your trade mark is owned by a corporation, the application should be made in the corporation's name and not in the name of directors or shareholders. A trust is to apply in the name of the trustees.
An association, whether incorporated or not, may apply for a collective trade mark.
You must use, or intend to use, the trade mark in relation to the goods or services included in the application.
If the trade mark is to be used by a corporate entity that is about to be formed, the applicant will need to assign the trade mark to the new body once it has been formed.
Is your trade mark likely to be accepted?
Before you apply for a trade mark registration, make sure your trade mark is unlikely to conflict with another trade mark.
You can submit a TM Headstart request for an initial assessment if you are unsure or conduct a search of the Australian Trade Mark Online Search System (ATMOSS) and other goods and services existing in the market place to ensure that you will not be infringing any existing trade marks.
Before you submit a trade mark application or TM Headstart request, there are a number of things to consider.
Will your trade mark be accepted for registration?
Your trade mark must distinguish your goods or services from others in the marketplace. For this reason, you will find it difficult to register trade marks that fall into the following categories as these are prohibited signs:
- denote the kind, quality, intended purpose or value of the goods or services
- are common surnames or geographical names
- conflict with an earlier trade mark
- would mislead the public about the nature of the goods or services
Some words, such as 'Olympic Champion' are protected by law and cannot be registered as a trade mark under the Trade Marks Act 1995. Other words are affected by other legislation, such as the use of the word 'champagne', which is governed by provisions of the Australian Wine and Brandy Corporation Act 1980.
Is my trade mark sufficiently different from other registered trade marks?
Your trade mark will be difficult to register if it is too similar to another trade mark on our database that covers goods or services which are too much like yours.
Important note: The reasons above are the most common reasons for trade marks being difficult to register. There can also be other less common reasons. We will advise you if any of these apply to your trade mark.
Fees are not refundable if your trade mark can not be registered.
What kinds of things are other people likely to use?
- Words which describe the 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 (generally a surname is regarded as common if our list shows it is found more than 750 times in Australia) you can search.
- Common place names, particularly the names of cities, towns and suburbs or areas associated with the goods or services you are claiming, such as ADELAIDE for car wash services or BASSSTRAIT for seafood.
- Abbreviations, acronyms, numbers or letters commonly used in relation to the goods, such as MRI for medical services, 4x4 for vehicles or XS for clothing.
- Commonplace or exact pictures or drawings of the 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 may be easier to register. An example is if a photograph of a cat was combined with the phrase PRETTY CAT for pet food.
We will determine whether your trade mark is something other people are likely to use.
Geographical names and surnames
A geographic name or popular surname is difficult to register, unless it has been used extensively and for a long period of time.
One of the basic tests in examination is whether the proposed trade mark is a term that other traders will have a legitimate need to use to describe their own goods or services.
Geographical names are likely to be terms other traders have a legitimate need to use. This is usually because the name refers to the geographic origin of the goods or service.
This can be especially true if the geographical region is known for a particular industry, for example Young is known for cherries. It also applies on more generic goods or services, like 'Central Sydney Couriers' for a courier service.
Other traders with the same surname will have a legitimate need to use it on their own goods or services. This is more likely where the surname is more common.
Registering geographical names and surnames
If you can prove that your proposed trade mark 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.
Last Updated: 23/11/2013