What is, and is not, Registrable
Trade marks may be notionally divided into two
groups. The first group is those trade marks able to be registered which
include not only those trade marks actually registered, but also those
which could be registered if their owners sought registration. The
second group is those trade marks which are inherently incapable of ever
being registered.
A trade mark is able to be registered if it is either
distinctive of, or is capable of becoming distinctive of, the products
or services in respect of which the trademark application is lodged and
with which the owner of the trade mark is connected in the course of
trade.
Three general types of trade mark are specifically
permitted to be registered. These are the name of the person represented
in a special or particular manner, the signature of the trade mark owner
or of some predecessor in his business, and an invented word.
An example of a name of a person represented in a
special way would be the surname MICHELIN spelt out with a number
of small motor vehicle tyres forming each letter of the word. An example
of a signature is the signature of Johnny Walker appearing on that when
known brand of whiskey. An example of an invented word is the trade mark
SARD in respect of soap.
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Trade marks in the second group which are excluded
from registration are those which are words having a direct reference to
the character or quality of the products, and also those words which
are, according to their ordinary meaning, a geographical name or a
surname.
The most obvious example of a word which makes a
direct reference to the character of a product is the name of the
product itself. This, TOPS would not be registrable for clothing
since it directly describes a particular type of clothing. However, a
trade mark such as TUB HAPPY would be registrable in respect of
clothing since, although it suggests the clothes wash well, it does not
directly describe that particular characteristic. Similarly, a trade
mark such as PERFECTION would not be registrable for any product
since it directly describes the quality of
the product. Such a trade mark which praises the product is said to be
“laudatory”. However, a trade mark such as FANTA which is vaguely
suggestive of ‘fantastic’ would be registrable since it is not a direct
reference to the quality.
Examples of geographical names which are well known
trade marks but not registrable nevertheless are YORKSHIRE for
plumbing fittings and OXFORD for books.
In relation to surnames, one may well ask ‘How is it
that surnames such as McDONALDS and FORD are registered?’ The answer is
that although not initially a registrable trade mark, because of the
very substantial level of sales able to be achieved by these
organisations, what was initially an unregistrable trade mark has been
converted into a trade mark which has become distinctive through
extensive use and therefore registrable for that reason.
Other distinctive marks include logos, such as the
three-lobed spiral device used by the International Wool Secretariat or
the three stripes on ADIDAS shoes.
Generally speaking numerals are not able to be
registered, although 4711 for perfume is an exception because of
its extensive reputation gained through sales. Similarly, letters of the
alphabet are not able to be registered unless they form a pronounceable
word, as is the case with a lot of three-letter trade marks such as
LUX and FAB for washing powder. Again, as a consequence of
acquired distinctiveness arising through use, e.g. ABC for
television services.
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