Choosing a Trade Mark

When choosing a business name, product name or logo for registration as a trade mark you should be mindful of a number of requirements under the Trade Mark Act 1995 as not all marks can be registered or registered easily. These requirements include:

Distinctive Marks
To register a trade mark, you need to ensure your mark is distinctive such that it is able to distinguish the product or business from the rest of the market.

A common mistake is that a mark is too descriptive, such that it indicates a kind, quality, quantity, intended purpose, value, or geographical origin.  The law is very hesitant to grant an individual a monopoly in a generic term.

An example of a descriptive mark would be “Steve’s Computers” compared to “Apple”, which is distinctive in the context of computers and software. The same applies for logos, you should avoid using a graphical representation of the product you are selling.

A mark that has acquired distinctiveness over time may be registered, provided sufficient evidence to support such a claim. However, as a general rule, it is best to avoid generic terms and symbols.

Already In Use
You cannot register a mark that is substantially identical or deceptively similar to a currently registered mark within the same category of goods and services.

Australia is a “first to use” jurisdiction compared to a “first to register” jurisdiction. Therefore, if another trader can prove they used a mark before you did, you may have difficulty registering your mark.

Hence, it is important to do an extensive search of not only IP Australia’s register, but also the internet, for both identical and similar marks. We can offer search services for our clients when registering a trade mark.

Surnames
Although you are not prohibited from using your surname as a mark, you may find it difficult to register if it is a common name such as “Smith”.

Misleading Marks
You should not use a mark that might mislead, for instance “Only Organic” for a restaurant selling non-organic food.

Geographical Names
If you wish to use ‘Adelaide’ or ‘Australia’ in a name, it may be difficult as other traders may also wish to denote their origin.

We note the above list is not exhaustive and we recommend seeking legal advice before applying for registration.

If you would like assistance with a trade mark registration or other intellectual property matter, please do not hesitate to contact our Tasman Wylie.

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