FREE Newsletter
Enter your details to receive our Quarterly Newsletter and Weekly Client Alerts
Free Services
Express Enquiry
    All fields are required
Testimonials

What Is, and Is Not, Registrable

 

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.

Registrable

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.

Λ Back to Top

 

Unregistrable

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.

Λ Back to Top

 

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 of this page and we will contact you to discuss your enquiry or call us on 1300 QUINNS (1300 784 667) or on +61 2 9223 9166 to arrange an appointment.