There are many words and symbols that are registrable as a trademark. It is also important to know what won’t be allowed. The key things to avoid where possible are confusion about who produces the good or service and using scandalous language. In this article we will discuss what is definitely out and what is less certain.
What Is a Trademark?
A trademark is a form of intellectual property protection. It identifies and distinguishes a unique product or service from the rest of the market. A trademark can be a letter, number, word (in a plain font or a ‘fancy’ font), phrase, sound, smell, shape, logo, picture, a plant, movement, aspect of packaging or a combination of these things. Trademark protection only applies in the specific class applied for at registration. Some examples of these are vehicles, clothing, and musical instruments.
From here on we will discuss words and symbols that can not be trademarked.
Scandalous Trademarks
The Registrar determines whether a trade mark is offensive or shocking. As a matter of public policy registrable trade marks must be rejected or removed if they are or become scandalous. This is because trademarks are protected by the government, who represent the people of Australia. To protect something scandalous it would reflect poorly on the government which should reflect the standard of the community.
Words and images which fall under the definition of scandalous have changed over time. They will continue to change based on the social norms and community standards of the day. Phrases that previously caused major offence are now acceptable as trademarks in certain markets. In contrast, words which once were ordinary may now have different meanings and be scandalous in certain contexts. Your business may benefit from using an offensive trademark, just prepare for potential legal difficulties during the process.
Coarse and Offensive Language
Societal values have shifted and while there is fairly broad acceptance of many suggestive words, some words are likely to cause offence across a wide section of the community. A trade mark may still be registrable even though it contains offensive language. The degree of invention and imagination used in the trade mark is key. Phonetic equivalents of strong but commonly used expressions, such as phar que, are generally acceptable when modified by humour or have a very idiosyncratic spelling for example, Dr Phuq.
An obvious phonetic equivalent with only a small difference in spelling, not modified by humour or subtlety, can still be scandalous enough to require rejection. The same applies when a common spelling of the offensive word is used.
Profanity
Words or symbols that show irreverence or contempt for religious or sacred things, are considered profane. Historically, words and phrases of this character have been treated carefully by the Registrar. Strong feelings are often tied to religious topics. the registrar considers these carefully. Vague suggestions generally are not rejected as the words must be obvious within the trademark to be sufficiently profane.
Words That Condone Violence
Words that invoke violence, racism or sociopathic behaviours fall within the definition of scandalous trademarks and will be rejected. Again the words need to be obvious in the trademark and the meaning can be different in each class of trademark. For example, an application for the word snuff in the movie studio and/or movie making services class would be rejected.
Words In Bad Taste
In all the above cases, the registrar will consider whether the trademark is actually scandalous or just in bad taste. The market the goods or services will be directed to is important. What counts as bad language for adult product like car adornments could be scandalous for use in children’s toys. If merely in bad taste for the class the words will not prevent registration of the trademark.
Use Contrary to Law
Words or symbols precluded by legislation will be contrary to law if used in trademarks. Some examples are the Olympic Rings, the word ‘ANZAC’, the Australian National Flag or the Red Cross.
Alternatively it is contrary to law to use a trademark where a court decision exists that establishes the illegality of its use. The IP Australia Trade Mark Search tool will show any of these trademarks.
Commonly Descriptive Words
Your trade mark needs to be able to distinguish your goods or services from those in the market. Words that are too descriptive may result in a rejected application. Words or images usually used to show the kind, quality, quantity, intended purpose, value, geographical source or some other attribute of the goods or services to which you will use your trademark for will be difficult to register. The reason for this is all traders should be able to use terms like these. Here are some examples:
- Words that are descriptive like chocolate for food, warm for heat packs or national for shipping and logistics services
- Commonly used words or phrases like ultra bright for stain remover or environmentally friendly for recycling services
- Common surnames in Australia like Wilson or Jones.
- Common names for places particularly cities, towns and suburbs which could be associated with your goods or services. Like Wollongong for car wash services or Mudgee for lamb.
- Abbreviations, acronyms, numbers or letters commonly used in relation to goods. Like PET for plastic materials, automatic for vehicles or XL for clothes.
- Exact pictures or drawings of common goods. Like a sketch of an toaster for toasters or a photo of a tomato for tinned tomatoes.
Genericised Trademarks
When a name for a product becomes so common that an ordinary person would refer to an object by that name, it is considered genericised. Names like Aspirin, Cellophane, Trampoline, Thermos and App-Store have all become genericised and lost their trademark protection accordingly. Genericised trademarks will be rejected upon application or typically later after a dispute.
Deceptive Similarity
A trademark is identical to or deceptively similar to another trademark if it is so closely resembles that other mark that it will likely deceive or cause confusion. Deceptively similar trademarks will be rejected on application. Goods or services will be counted as similar if they are the same as the other product in question, or of the same description as the other product in question. The justification for this is that it undermines the protection the trademark system provides.
There is a fine line to walk and it is important to adequately differentiate your trademark from any similar marks. To get an idea of what marks may be close to yours try using with the IP Australia Trade Mark Search.
Can You Parody a Trademark?
There is no specific parody defence to trade mark infringement. However, reproducing a trademark in an artwork, play, song or other creative form when not used to indicate a connection between the artwork and the owner of the trademark is not counted as trademark infringement. It may however be copyright infringement. In situations like these the trademark is not being ‘used’ to show the source of the products or services. This is because it becomes difficult for the owner to demonstrate confusion of the ordinary person regarding the origin of the goods or services.
Hashtags
If you apply for a trademark using the # symbol that is similar to a trademark without the # symbol, it would still be considered similar. For example, a trademark for ‘Big Crunch’ registered by applicant 1 would be considered too similar if the same or similar goods and services as a trademark application for #bigcrunch by applicant 2. Read more about hashtags and trade marks.
Finally
Although this guide provides a general idea of what cannot be registered as a trademark you may still be uncertain if your trademark can be registrable. Speaking with a trademark attorney can alleviate there concerns and provide more certainty about a less risky choice. When you are ready to move forward, you can register the trademark yourself here.
