One consideration when examining your application is whether your trade mark uses commonly-used descriptive terms, phrases or images. If it does it may not be accepted for registration. Our thinking with trade marks tool might be able to help you with decision.
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.
Here are some 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, 4x4 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 may be easier to register. An example is if a photograph of a cat was combined with the phrase PRETTY CAT for pet food.
A geographic name is difficult to register unless it has been used extensively for goods or services for a long period of 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.
This can be 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 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
If 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.
Restricted words related to banking and financial services
The use of certain words and expressions in trade marks for Class 36 services is restricted under the Banking Act 1959 sections 66 and 66A and the Life Insurance Act 1995 section 16E. Class 36 services include insurance, financial, monetary and real estate services. The restricted words and expressions include:
- AUTHORISED DEPOSIT-TAKING INSTITUTION
- BUILDING SOCIETY
- CREDIT SOCIETY
- CREDIT UNION
- FRIENDLY SOCIETY (in relation to the conduct of a financial business)
- any other word or expression (whether or not in English) that is considered to be like the above terms.
Reference to a restricted term includes where the term is included as part of another word or expression, for example BANKSIA. The exception is when the term ADI forms part of another word, for example TRADITIONAL.
All applicants of trade mark applications containing one or more of these restricted terms are required to be on the List of Authorised Deposit-Taking Institutions available on the Australian Prudential Regulatory Authority (APRA) website or to provide written authorisation from APRA.
To seek approval for any of the above words write directly to:
The Australian Prudential Regulation Authority
GPO Box 9836
SYDNEY NSW 2001
If APRA grants consent or decides consent is not necessary, please supply a copy of the relevant APRA documentation to us with your application.
Under Article 6ter of the Paris Convention for the Protection of Industrial Property, member states (including Australia) agree to protect various signs including:
- armorial bearings
- official signs
- abbreviations and names of international intergovernmental organisations.
Under Article 6ter a member state must:
- refuse to register a trade mark that consists of or contains a notified sign as well as any trade mark that has a certain similarity to a notified sign
- invalidate any registrations for trade marks that consist of or contain notified signs
- provide effective means to stop unauthorised use of notified signs
- extend protection to the flags of the member states regardless of whether they have been notified
- if they intend not to extend protection to a notified sign, communicate such an intention within 12 months of notification
- make a list of those signs that have been notified available to the public.
New notifications and additions
Australia has a period of 12 months from the notification date to advise whether protection will be provided for the signs. The notification date is the day on which the sign is published by the World Intellectual Property Organization (WIPO).
Newly notified signs are published online by WIPO every six months.
Locating notified signs on the trade marks database
When received, notified signs are indexed and put onto the trade marks database. They are allocated numbers in the -9000000 range and are currently classified in Class 42 for searching purposes. These marks can be located in a standard search of the database using the ATMOSS search tool.