Trade marks likely to be needed by other traders

Why are some trade marks hard to register?

Under section 41 of the Trade Marks Act 1995

What makes a word or phrase hard to register?

Everyday words should remain available for all to use. This means a word or phrase is hard to register if other people are likely to need to use it. A word or phrase is easier to register if other people are not likely to need to use it.

What kinds of words or phrases will be hard to register?

Everyday words or phrases that clearly describe your goods or services will usually be hard to register.

For example, any orange farmer should have the right to describe their goods as “juicy oranges”. It would be unfair to other farmers to give one farmer the exclusive right to use JUICY ORANGES as a trade mark. It would be very hard to register this as a trade mark.

Words or phrases describing kind, quality, purpose or value are usually hard to register. So are geographical names or common surnames.

Here are some examples of words or phrases that would be hard to register. This is because they are descriptive, or a common surname, and other people would be likely to need to use them:

DELICIOUS FOOD for take-away food
GLOBAL for freight shipping services
NSW MORTGAGES for mortgage broking
REVERSE CYCLE for air conditioners
DISCOUNT BEER for the sale of beer
SMITH for any goods or services

What kinds of words or phrases will usually be easier to register?

Words or phrases that do not clearly describe your goods or services will usually be easier to register.

Here are some examples of the sort of words or phrases that more easily meet the requirements of section 41, and are usually easier to register as trade marks:

Invented: eg KODAK.

Suggestive, not directly descriptive: eg CUDDLY for fabric softener, VISIONMASTER for spectacles.

Unrelated meaning: eg APPLE for computers, BEAR for tea.

What about other kinds of trade marks?

Trade marks can also be designs or logos, or include designs or logos. Like other trade marks, they will be easier to register if they are something other people are not likely to need to use.

For example, a lifelike picture of an orange would be hard to register for oranges. However, a picture of a koala on a surfboard doing a handstand would be easier to register under section 41 for oranges.

A descriptive word or phrase will usually become registrable if it is combined with a registrable design or logo.

Last updated: 
11 April 2016