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As most business owners will know, designing a trademark that can be registered and protected can be tricky and costly. You’ll be working with marketing and advertising teams to get the word out about your product or service. Your trademark assets, such as the name and logo, are an important part of making sure potential clients recognize your brand and can distinguish it from competitors.
However, just because you have invested heavily in developing your mark, you aren’t guaranteed that your trademark registration will be successful. There may still be reasons IP Australia rejects your application.
Let’s take a closer look at what makes a strong trademark.
- Be original. A strong mark is often one where the word is made up—it doesn’t exist in a dictionary, in any language. For example, Pepsi is a unique and robust trademark for the carbonated drink because the term doesn’t exist anywhere else in the “real world.”
- Think out of the box. It’s a good strategy to use a word for your product or service that is not related in any way to the actual merchandise or service. The iconic computer company used the name Apple for its tech products, but the trademark is unlikely to be used descriptively by others in the same industry as it has nothing to do with the products.
- Create an impression. Finding a name that has a connection to the product or service, but does not describe the product or service is The aim is to give the potential customer an idea of what the service or product might be without being literal. The mark somehow enhances the name, or gives a good impression of it, by creating a link. The Greyhound logo instantly gives customers the impression that, like the racing dog, the bus service is fast and sleek. It’s all about creating positive associations, and it makes for a strong and effective mark.
Before you apply for trademark registration, it’s worthwhile consulting a trademark expert. They will be able to give you advice, so you know if your mark is strong enough to be eligible for registration. They will alert you to any changes you may need to make before you apply.
We will now take a look at some of the issues that could be raised that are signs that the trademark may be weak. Most common is that the mark, in Australia, is not taken as capable of distinguishing the goods or services claimed because it’s descriptive and likely that others would need to use the same or similar words for the same and similar activities.
Of course, the benefit of a descriptive trademark is that your customer will instantly recognize what your business does. On the other hand, they can be challenging marks to protect and enforce. You may find yourself in the position where you have to prove you have used your mark extensively and for an extended period to show IP Australia that despite lacking in distinctiveness it can and will distinguish your product or service from others due to the length of time, extent and manner of use before you can register it. Further, it can be quite difficult to stop others from using similar marks where they are descriptive.
Also, think carefully before you use generic terms that are used to describe your products and services for your mark. They cannot be registered as trademarks because they would prevent other people from having the right to use words or terms that they need to use as part of the industry they work in. You cannot have a monopoly over a generic term. It would also be unwise to choose a generic term as your name if you want to be instantly recognized as a unique brand in your sector. For example, whilst Apple is acceptable for computer and tech products, it would not be possible to register Apple as a trademark for apples the fruit.
Other marks are prohibited without, in some circumstances appropriate ministerial consent, and usually under no circumstances will your registration be successful if you use any of these. For example, marks that incorporate:
- The royal family
- Australian Armed Forces badges or crests
- The Red Cross or United Nations emblems or names
- Flag or symbols of nations
You cannot use any mark that is scandalous. Your registration will also be turned down if your mark implies (falsely) that is inherently deceptive—e.g. that suggests you are affiliated with a famous person when you’re not.
If you follow this advice, you will ensure you have a strong trademark. The next step is to undertake a trademark search to rule out any possible conflict with the marks of registered trademark holders. Apply for your registration as soon as you have a registrable trademark. A trademark professional will be able to assist you with the application and filing so you can avoid any problems or delays.
