Two main rules to select a trademark in Australia

Updated: Jan 25, 2021

To create a trademark which meets your interest and the requirements to be registered, you should remember two main rules below:

  1. A trademark should be distinctive

Trademarks that are not inherently adapted to distinguish goods or services are mostly trademarks that consist wholly of a sign that is ordinarily used to indicate:

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)the time of production of goods or of the rendering of services

This is because these types of signs should be available for all traders to use to describe characteristics of their goods and services.

For examples some of the signs that will be difficult to register as a trademark are

words which describe the quality of goods and services such as COLD for air conditioners, SWEET for candy. Common used words or phrases such as SUPER FAST for delivering services.

2. A trademark could not be identical or too similar to an earlier registered trade mark

For example: Iphone mark is already registered in relation to mobile. We cannot trade mark the similar marks such as Iphone Online or Iphone 123 in relation to the same goods.

Some other types of trade marks that are difficult to register are:

  • Geographical names such as SYDNEY for apples

  • Commonly used acronyms, single letters, and numerals

  • Common surnames such as SMITH or JACKSON

  • Marks that are scandalous or misleading

  • Marks that are prescribed or prohibited such as OLYMPIC CHAMPION

  • Marks that are subject to legislation such as CHAMPAGNE is governed by the provisions of the Wine Australia Corporation Act 1980 (the Wine Act)

TIPS: The best trademarks are those which are totally invented without any meaning and do not imply in any way to the products/services which are provided. For example:

  • Invented words such as Lexus, KODAK

  • A common word used in an unrelated context such as Apple for computers

If you have any questions or concerns about trademark issues, feel free to contact us. MAYGUST TRADEMARKS are happy to assist you!