Insights / November 30th, 2016

Can you register your brand as a trade mark?

A registered trade mark is the ultimate tool in protecting your business’ brand. A registered trade mark gives the owner monopoly rights for the use of the mark in relation to the goods and/or services in respect of which it is registered.

There are essentially two tests for a trade mark to satisfy to be accepted for registration by IP Australia:

  1. The trade mark must be sufficiently distinctive in of itself to be able to distinguish the applicant’s goods or services from those of other traders.

  2. The trade mark must not be identical or deceptively similar to any other trade marks already registered on the IP Australia trade mark register.

A lot of trade marks which would otherwise fail to satisfy the first element (i.e. they include descriptive words) may be registrable if they contain a distinctive logo element. This is because, when considered as a whole, a trade mark which includes both words and a unique logo is more likely to be capable of distinguishing than simply the words themselves. The logo element must be sufficiently distinct and unique to render the whole mark sufficiently capable of distinguishing the applicant’s goods or services.

It is important to bear this is mind when engaging graphic designers to design your branding. If the words used in your brand are descriptive of the goods or services in respect of which your trade mark is used, a simple logo design or mere embellishments around the words may be insufficient to distinguish your trade mark from those of other traders. If IP Australia considers that the words in your trade mark should be able to be used by other traders (and they form a predominant feature of your trade mark), IP Australia will not accept your trade mark application for registration in the first instance.

To avoid future headaches and unnecessary fees, business’ should ensure that their branding is sufficiently distinctive from the outset.

For any trade mark or other intellectual property queries, please do not hesitate to contact Rob Kennett or Katie Pote.

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