A trade mark must be distinctive enough to be capable of distinguishing the goods or services in relation to which it is used or proposed to be used. In determining whether a mark is sufficiently distinctive, IP Australia will consider:

1. the mark itself, including its content, graphical presentation (if any), connotations, etc;
2. the use or proposed use of the mark; and
3. the existence of any similar marks.

 What are the possible reasons for rejection of my proposed trade mark, and can I overcome the objections raised?

Proposed use of the Mark

A trade mark must be 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.

Essentially, this means that your trade mark can’t be too similar to, or capable of being confused with, another registered trade mark.

Whether this is the case will be considered during any examination of a trade mark by IP Australia

Content of Mark

With any trade mark application there is always the possibility that the trade mark examiner may raise objections to accepting a mark for registration. IP Australia will generally look favourably on marks that are made up of proper names or fictitious words, especially when accompanied by a distinctive logo. However, objections are often raised by a trade mark examiner if they consider that the proposed mark is merely descriptive of the goods or services in relation to which the mark is used, or made up of common words without some additional distinctive element in the mark.

Furthermore, IP Australia may raise an objection to a trade mark that is made up of a geographical name or common or descriptive words without some additional distinctive elements.

If you have expended significant amounts of money on advertising/using the proposed trade mark, and you can show the use of the proposed trade mark widely over a period of time (and in some cases even if this has only occurred after filing the application) then you may be able to overcome some objections that may be raised by IP Australia.

As a last resort to overcome objections, you could also seek to use a disclaimer under section 74 of the Trade Marks Act 1995 (Cth), to try to overcome any objection by IP Australia or any opposition.

If you need assistance in registering your trade mark, contact Emily to find out how we can assist you.

The content of this article is intended in the nature of general information, and cannot be relied upon as legal advice. You should seek specialist advice about your particular circumstances.