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Avoiding trademark pitfalls how to ensure your brand name is registrable

By James Wan

What you need to know (in a nutshell)

  1. A trademark is not registrable if It’s very similar or identical to an existing well-known trademark and is capitalising on its reputation.
  2. A trademark is not registrable if there is already an identical or confusingly similar trademark on the register covering the same or similar goods or services.
  3. A trademark is not registrable if It’s commonly used in the industry and should be available for others to use, descriptive, describes characteristics or quality of goods or services, contains superlative words, likely to confuse or deceive the public or is likely to offend the public.

Full Article

Navigating the trademark registration process with IPAustralia requires applicants to be mindful of the criteria for registrability. To avoid objections, it is crucial to understand which trademarks may not pass examination. Common issues arise when a trademark resembles an existing brand, uses misleading language, incorporates unauthorised symbols, or contains offensive material. Each application warrants careful consideration by experienced examiners, but awareness of potential pitfalls can ease the registration process.

Filing a trademark similar or identical to a well-known brand, capitalising on its reputation, is likely to elicit objections. Conflicting marks covering related or slightly comparable goods or services can also obstruct registration due to potential confusion. Trademarks should be unique yet non-distinctive, as overly distinctive marks may restrict others in the same industry from using similar marks. Striking a balance between uniqueness and non-distinctiveness is essential for registering a business name or product identity.

Accurate representation of goods or services is vital for a trademark. For instance, “The Courier Company” describes a courier service provider. Trademarks may also indicate product characteristics and quality, enhancing their value in differentiating products from competitors.

Trademarks containing laudatory or complimentary terms, such as “Quick Couriers” or “Supreme Couriers,” can imply exceptional service, helping companies stand out. However, trademarks deemed confusing, misleading, or offensive may face legal issues and approval challenges.

“Flying F**k Deliveries,” a renowned industry name, exemplifies a company adept at balancing innovation with reliable and efficient delivery services. By carefully selecting trademarks and adhering to registrability criteria, businesses can achieve a strong market presence and avoid potential objections during registration.