Registration of a mark in Australia provides the owner with proprietary rights in the country and entitles it to restrict the use of the trade mark, or a confusingly similar trade mark, in association with similar goods or services. These rights are not obtained if the mark is used as a business name, domain name, or company name without registering it as a trade mark. There are many rules surrounding what can and cannot be registered and it is important to seek specialist advice on this issue. This article provides a very brief overview of registration of marks.
What is a Trade Mark?
The Trade Marks Act 1995 (Cth) (“the Act”) defines a trade mark as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. A sign includes “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”.
What can and cannot be registered
Trade Marks can cover a wide array of mediums beyond simply a slogan or name. A Trade Mark can be granted over non-traditional marks such as those pertaining to movement, shapes (for example Toblerone’s box shape reg no 706787) and sounds (for example Kraft’s “Happy Little Vegemites” tune under reg no 941361). Although more difficult, a mark can also cover colours in certain circumstances (for example Cadbury’s colour purple for blocks, boxed chocolate and bars reg no 1120622)) and scents provided the scent is distinguishable and not a characteristic of the product, that is, you cannot register a scent mark for a perfume (current registered scent marks include E-Concierge Australia Pty Ltd’s eucalyptus scented golf tees reg no 1241420 and NorvaNivel Pty Ltd’s cinnamon scented non-wood based furniture reg no 1858042).
All marks must be capable of graphic representation to be registered. For scents for example, the scent needs to be described and this can be via a verbal description.
Under the Trade Marks Act 1995, a mark will be refused registration if it contains certain signs, cannot be represented graphically, does not distinguish the applicant’s goods or services, is scandalous or contrary to law, is likely to deceive or cause confusion or is identical to an existing mark.
For a trade mark to be registered it needs to be “inherently adapted to distinguish the designated goods or services from the goods or services or other persons” or there must be evidence that its use was distinctive at the time of filing. Those that consist wholly of a sign ordinarily used to indicate “the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, or goods or services; to the time of production of goods or rendering of services” are taken to be not inherently adapted to distinguish as above.
In essence, a mark needs to be distinctive enough to separate a brand from other brands in the marketplace.
Good trademarks include:
- Generic words not part of particular goods or services; or
- Made-up or invented words;
Generic words which form part of goods and services are very difficult to be registered as a trade mark, however they can be more easily registered if they have nothing to do with the goods and/or services in question.
Apple, if you had a shop selling apples, would not be capable of registration, however since it is a very successful electronics brand, registration was possible.
Arguably the best words to secure a strong Trade Mark are words that are completely made-up for example, Nabisco, KODAK, Velcro, Microsoft, Starbucks, etc. A registered Trade Mark is more likely to be secured, (together with the higher likelihood of securing the domain names and social media names), with a made-up or invented word.
Registering in Classes
For the purposes of registering a trade mark, all goods and services are categorised into classes. When making an application, the applicant must nominate the number of classes in respect of which the application will apply. Unfortunately, increasing the number of classes will increase the amount of government fees payable.
If you require advice or assistance with your mark, contact the experienced team at Miller Sockhill Lawyers on 07 5444 4750 and one of our friendly team members can answer any questions you might have.
The content of this article is current at the date of publishing and is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
 Trade Marks Act 1995 (Cth) section 17.
 Trade Marks Act 1995 (Cth) section 6.
 Trade Marks Act 1995 (Cth) ss 39-44.
 Trade Marks Act 1995 (Cth) s 41(3)(a).
 Trade Marks Act 1995 (Cth) s 41(3)(b).
 Trade Marks Act 1995 (Cth) s 41 Note 1.