Trade marks may be notionally divided into two groups. The
first group are 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 are 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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Our dedicated team can assist you with issues related to
trade marks and other Intellectual Property
matters. Complete
and submit the Express Enquiry form on the top right hand side
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