The public will identify a certain quality and image with goods and services bearing your trademark. If you are thinking about a new product or service and you want to establish an image for it, you should also be thinking about a distinctive trademark under which to market.
It is important to note, however, that not all trademarks can be registered. A trademark is not registrable if it is not capable of distinguishing your goods or services from the same or similar goods or services of other traders in the marketplace.
Every-day language and vocabulary should remain available for all to use. Granting monopoly rights in words such as geographical names, common surnames and trade expressions would deprive others of their right to use these words in the relevant industry.
The following points are examples of words or phrases used on their own, i.e. not with accompanying logo or other words. These are types of words that other traders are very likely to need to use and consequently would be very difficult to register as trademarks:
- Descriptive words and phrases on their own e.g. “THE BEST APPLES”. Obviously, other apple farmers have a legitimate need to be able to say that they grow the best apples too.
- Short combinations of numbers and letters (such as QL 9 or F-55 etc) are often used as serial numbers. Combinations of two letters (such as VP or HS) are commonly used as initials. Both would face significant difficulty in achieving registration. Common acronyms (such as CD-ROM or LED) or abbreviations (such as AUTO BILLPAY) are also difficult to register.
- Common surnames such as “JONES” or “SMITH” would have problems achieving registration, as there are many Jones and Smiths in the Australian population who need to be able to use their name in relation to the goods or services they are providing. However, an unusual surname such as “GREGAN” or RUDNICKI has a higher likelihood of achieving registration.
- Words or phrases that other traders would need to use can often be registered if they are accompanied by or combined with other unique words or symbols. For example, the phrase “SYDNEY PLUMBING” would be difficult to register on its own.
Obviously, you don’t want to start using a trademark that another trader is already using on goods or services that are similar to your own. This could lead to customers being confused between the two trademarks and could even lead to the other trader taking legal action against you.
Even if you meet the registrability requirements and your application is examined and accepted, registration is not guaranteed. Every accepted application is advertised in the Official Journal of Trademarks, after which there is an opportunity for others to oppose registration of your trademark.
This article is for general information only and is not intended as legal advice. If you need specific help, please contact our office.
