- Amending a trade mark
- Applying for a trade mark application
- Applying for TM Headstart (pre-application assessment service)
- Assignment, transmission or sale of trade marks
- Capable of distinguishing
- Claimed interest
- Classes of goods and services
- Deferment of acceptance
- Divisional applications
- Extensions of time (EOT)
- Find a mortgage over a trade mark
- International trade marks
- Multi-class applications
- Ownership of a trade mark
- Registration and renewal of a trade mark
- Revocation of acceptance
- Series applications
- Trade marks for plants
- Types of trade marks
Can I amend my international registration at any stage?
Once the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva has registered your trade mark, you cannot extend the classes of goods or services claimed. You cannot make any changes to the actual trade mark. You can, however, change your name and address details and request a limitation to the goods or services classes claimed.
Yes, to a limited degree. This is because TM Headstart requests and assessments occur before you file your application for full registration. Therefore, there’s a small window of opportunity for you to make amendments. You may have to pay an additional fee.
Can I amend the ACN on my application?
No. A change in the ACN equates to a change in legal ownership of the intellectual property (IP). This means you need to complete an assignment (a handover or sale of the IP).
The answer depends on whether details of your application have been published in the Australian trade mark search. Prior to publication, amendments can be requested, but only if we are contacted in time. Details of an application are published on the same day as they are filed, or within one business day. You can contact us by phone, but this must be followed up immediately by filing an amendment request. We can only hold off publishing your application for one day, at which time it will be published as filed. There may be scope to amend a trade mark after it has been published to correct clerical or office mistakes. These amendments may need to be advertised for opposition.
My application is in the name of ABC Pty Ltd. Can I amend the name to 123 Pty Ltd?
No. If the ACN numbers are different then this means an assignment (a handover or sale of the IP) is needed. You may apply for an assignment by filing the appropriate form and providing proof of title.
What is involved in amending my trade mark?
You can make a written request to amend your trade mark, which must include details of the trade mark number and the nature of the amendment. Any such request is examined by a trade mark examiner.
Why can't I amend my trade mark after filing?
It is not possible to substantially amend your trade mark once registered on the Australian trade mark search as it would disadvantage other applicants who are also filing trade marks. These traders may be unaware of your proposed changes at the time they do a search for their trade mark.
Can I file all of my trade mark applications online?
Our online form has been designed to deal with the majority of trade mark types and is structured to gather information for a basic trade mark application. Where application details are more complex, the form will dynamically change to meet the demands of the specific application.
What trade mark transactions can I perform online?
You can perform a range of trade marks transactions online. These include:
- requesting an assessment of your proposed trade mark via TM Headstart
- filing your application to register a trade mark
- paying trade mark registration or renewal fees
There is also the online facility for searching Australian trade marks.
Will my application be processed faster because I have filed it electronically?
No. The Trade Marks Act 1995 requires that applications are examined in the order in which they are received. Electronic filing will simply be a more convenient alternative to the existing paper application form for those applicants with internet access.
How will I know that you have received the application details correctly?
When you submit your form with us, you are given a pre-filing number to identify your application if you need to make an enquiry. After receiving the form we record your details on our database, process your payment and allocate a trade mark number. You will then be sent a Notice of Filing which will advise of your trade mark application number, a copy of your application details and briefly explain the examination process for you.
If you have difficulties completing the form, for example: ‘I am not sure what class my services fall in?’, or, ‘The form is telling me that my trade mark image is not in the correct format’, please seek assistance from the Customer Support Centre on 1300 651 010, or International: +61 2 6283 2999 9am to 5pm Monday to Friday.
After I am contacted about the TM Headstart assessment results, when do I need to pay the Part 2 fee?
The Part 2 fee needs to be paid by 11.59pm on the day of the discontinuation date stated on your Results Report (the name given to your TM Headstart assessment finding). After this time, your request will discontinue and cannot be revived.
Can I amend the goods and services once I have submitted a TM Headstart request?
Yes. Amendments can be made to a TM Headstart request before a Part 2 fee is paid. There may be additional fees. You can choose to delete goods or services from your request at any time, but class fees already paid won't be refunded once a request has been submitted. As this is a fast turnaround service, it is unlikely we will be able to make extensive changes to your goods and services’ classes.
Can I amend my trade mark or my goods and services once I have paid the Part 2 fee?
No. Payment of the Part 2 fee converts your TM Headstart request to an official trade mark application. At this point the details of your request are published on the Australian trade mark search. Once the details have been published you can't make any changes that will substantially affect your trade mark identity or broaden the scope of your goods or services.
Can I amend the trade mark prior to paying the Part 2 fee?
Yes, but changes may be limited or attract a fee. If the amendment requires us to undertake another assessment then an additional amendment fee, per class, of goods or services will be payable.
Can registration of my trade mark be opposed by anyone?
Once you have paid the Part 2 fee your TM Headstart request is converted to a trade mark application. Any trade mark application that is accepted for registration can be opposed.
Do I get a refund of my Part 2 fee if my application for registration is not successful?
No. The Part 2 fee is charged to convert your TM Headstart request to a trade mark application. It is non-refundable.
Do I have to use the goods and services picklist?
Yes. You can only make a TM Headstart request using the goods and services picklist.
How is my TM Headstart request affected by trade mark applications from overseas?
We have agreements with other countries that allow overseas trade mark applicants to claim the date they filed in their country as their filing date in Australia. This date may be earlier than your filing date. We won’t register your trade mark until it is certain there are no similar overseas applications claiming an earlier convention priority date.
How long is the result of a TM Headstart assessment valid?
The result of a TM Headstart request is only valid from the day you receive your assessment. You must move quickly to convert it to a trade mark application if that’s what you wish. This is because the Australian trade mark search is constantly being updated with new trade marks. Old or unwanted trade marks are being removed. There are also changes in office practice or legislation from time to time that could affect the outcome.
If I decide to pay the Part 2 fee do I need to request expedited examination?
No. Within two weeks of paying your Part 2 fee your application will be examined. It will be either accepted for registration or you will be sent a report detailing any problems your application is facing.
We will discuss options available to you to overcome problems raised in your assessment. Some options such as minor amendments to classes can be attended to before payment of the Part 2 fee. However, if the amendments are substantial or complicated these can only be discussed broadly during the TM Headstart process. Additionally, because a trade mark is yet to be filed it is not possible for examiners to consider submissions or evidence at this stage. These can only be considered following payment of a Part 2 fee.
If I use TM Headstart will I get a positive result?
Not necessarily. TM Headstart assesses the suitability of your trade mark against requirements of the Trade Marks Act 1995. If we consider your trade mark may face problems we will raise these with you in your assessment.
If my trade mark is accepted how long will it take for it to be registered?
By using TM Headstart your trade mark may be accepted quickly. However, the earliest your trade mark can proceed to registration is at least seven months after you have paid the Part 2 fee. This is due to the normal time allowed for the application process to be completed and for the opposition period (where other traders are given an opportunity to assess the impact and details of your trade mark registration) to take place.
If my trade mark is registered, from what date does my protection start?
Your protection will start from the date your Part 2 fee was paid. That is the date you formally filed a trade mark application. A TM Headstart request is not a trade mark application, so the date you filed it is not relevant.
What is a top-up search?
A top-up search of the Australian trade mark search is done approximately 10 working days after a Part 2 fee is paid. The top-up search is done to locate any similar trade marks filed around the same time as your TM Headstart request, but had not yet showed up on the Australian trade mark search.
Will my request fee be refunded if I don't pay the Part 2 fee in time, or if I don't get a positive result?
No. The fee you pay at the time of submitting your TM Headstart request is for the assessment of your trade mark. Once this assessment is completed it is not possible to refund the fee.
Will the details of my TM Headstart request remain confidential?
Can you assign pending applications?
What type of transfer documents do I need to file?
The assignment application form should be accompanied by documentary evidence showing proof of title, such as deed of assignment, merger document, simple letter of assignment, probate document in the case of a deceased owner, or a declaration.
Do assignment documents need to be original?
They need to be original or certified.
What is a certified copy of an assignment document?
This is a copy which has been certified as being a true copy. For example: 'I hereby certify that this is a true copy'. Certification must be signed, dated and have the name of the certifier near the signature. You should check if there are conditions on who can certify copies.
Does the recording of a claimed interest or right remain on the register even when the trade mark is sold and the assignment recorded?
Yes, unless the recording of the claim is cancelled. The claimed interest or right is, however, notified of any assignment application filed.
What record is created if a trade mark is partially assigned?
When a trade mark is partially assigned a new trade mark number is created with the new owner’s details and the goods and/or services that were partially assigned from the original trade mark. The history record, including filing date, renewal date and any convention or divisional details from the original trade mark is also transferred to the new trade mark along with the trade mark’s representation. The original trade mark is then amended to remove the goods and/or services that were assigned.
If there are no owners of a trade mark except liquidators, can nominated liquidators assign trade marks?
Yes. Liquidators have the power to transfer or assign trade marks to anyone on behalf of owners. Normal application forms apply.
When is the applicant notified that an assignment has been carried out?
A letter is sent to the applicant's supplied address when the assignment has been approved.
Who is the assignee and who is the assignor?
The assignee is the new owner. The assignor is the old owner.
What is meant by 'capable of distinguishing'?
If the trade mark is one which other traders are likely to desire to use in connection with their own, goods or services, the trade mark application may be rejected. Examiners rely on the Trade Marks Act 1995, research, court cases, legal precedent and other issues to decide whether a trade mark is capable of ‘distinguishing’
Can an applicant offer a disclaimer?
Yes. But a disclaimer will not affect or help the ability of a trade mark to be registered. If the trade mark is not capable of distinguishing its goods and/or service, a disclaimer will not get it accepted. The trade mark as a whole is considered.
If a trade mark is not capable of distinguishing, does the application have any chance of getting registered?
It will probably mean that a ground for rejection will be raised in the examiner's first report. However, there are ways of overcoming grounds for rejection through the provision of evidence of use of your trade mark. You can ring the examiner of the application for further information, or you can discuss these options and their probable costs with a trade mark attorney or legal practitioner.
What happens if part of a trade mark is not capable of distinguishing but the remainder of the trade mark is able to be registered?
Trade marks are considered as a whole. The whole trade mark must be capable of distinguishing the goods and/or services. The overall impact of the trade mark on the potential user will be considered by the examiner.
Can I record a claimed interest in a trade mark with IP Australia?
Yes. We record claimed interests on the Australian trade mark search. If claimants wish to receive certain notifications under the Trade Marks Act 1995, they can search this database. If you intend to act upon your claimed interest you will need to have had it recorded. All interests in a specific name can be identified by selecting ‘Advanced Search’ then ‘Claimed Interest Name’ and enter the name to be located.
Do I need to file a copy of the agreement or mortgage document between the owner and the person claiming an interest?
Yes. If you are the claimant filing without the owner of the trade mark, the Registrar needs documentary proof to be satisfied of your claimed interest. If it is a joint application with the owner of the trade mark, documentary proof is not required.
Do you need to send in a copy of the mortgage through which you wish to claim an interest?
No. You just need to complete the appropriate form.
Where else should I record my claimed interest in a trade mark?
All claimed interests in a trade mark must be recorded on the national online Personal Property Securities Register (PPS Register). As of 30 January 2012, the right of the registered owner to deal with the trade mark is limited only by those claimed interests that have been recorded in the PPS Register. If you ever act upon your claimed interest you will need to have it properly recorded.
Can I add extra classes or additional goods and/or services to my application?
No. This would unfairly extend the scope of the original application. This is unfair to other traders who have viewed your published application and possibly based business decisions upon it. If extra goods or services need to be added, that would extend or widen what you have claimed originally, a new application will have to be filed.
Before applying for a trade mark it's wise to conduct a detailed search to make sure there are no similar trade marks already pending or registered. It's a good idea to search as widely as possible.
Searching is not as simple as it sounds. It requires skill and persistence as merely searching for an identical mark is not sufficient.
An IP professional may be able to provide you with further assistance and advice.
Can I add extra classes or additional goods/services to my trade mark if I've used TM Headstart?
TM Headstart allows you to amend your claim for goods and/or services if necessary. Because TM Headstart assessments happen before you officially file your application for registration, there is a small window of opportunity for you to make amendments. A fee may apply.
How do I work out if my goods or services are similar or closely related to those of another application?
Examiners rely on tests established through court cases to see if goods or services are of a similar description. Some of the factors examiners consider are:
- what the goods/services consist of
- the origin of the goods/services
- the purpose of the goods/services
- if the goods are usually made by one manufacturer
- if the services are usually provided by one and the same business or person
- if the goods are distributed by the same wholesale houses
- if the goods/services are provided from the same sources, during the same season, in the same area or district and to the same customers
- if the manufacturers, distributors or providers of the goods/services consider themselves to belong to the same trade.
- 'metal blinds' and 'awnings' fall in different classes but are considered to be similar goods
- 'computers' and 'computer programming' are considered to be closely related goods and services
- 'business management consulting' and financial management fall in different classes but are considered to be similar services.
It is important to note that court cases have observed that no single factor is conclusive in itself.
The goods and services picklist is an electronic tool designed to help you identify the classes of goods or services to which your trade mark applies. The picklist is a component of the online filing facility. If you use it, your filing fees will be automatically calculated and there won't be any classification errors preventing acceptance of your trade mark application, though there may be other substantive issues raised. Using the goods and services picklist also saves you money as a discount applies to applications filed using the picklist facility.
If an applicant files a request for deferment on the final day of the 15-month period allowed, how much time do they have left when deferment is terminated?
None. The time left when deferment is terminated is the time that remained of the 15-month period at the time deferment was granted. An extension of time should be filed with plenty of time remaining, so when deferment is terminated the application will not immediately lapse.
What happens if I have a divisional application of my basic trade mark within the five-year dependency period?
The divided application becomes another basic trade mark, as the goods and/or services covered by the international registration are now covered by two national trade marks. It should be noted that if the divisional application is restricted or lapses during examination, the result will also affect the international registration.
For an EOT on an application beyond the 21-month period (under section 224), does the request need to be accompanied by a declaration or can it be forwarded at a later date?
Regulation 21.25 states that the extension of time application must be accompanied by a declaration.
If an extension of time is not granted will the fees be refunded?
Mortgages are recorded on the national Personal Property Securities Register. You can search this register to find out whether there is a mortgage over a trade mark.
Mortgages over a trade mark, and all other security interests must be recorded on this national register by the secured party. If the trade mark owner is a company, the mortgage may also be recorded on the Register of Company Changes.
Can I take infringement action in my designated countries once protection has been extended?
This will depend on the national legislation in each designated country. Any infringement actions you take must meet local requirements.
Can I file an international application with different specifications for each designated country?
Yes, as long as the goods or services are included within the basic trade mark.
Yes. You can withdraw countries at any stage, including at renewal time.
Can there be any differences between the trade mark on the international application and the basic trade mark. For example, can I remove a label such as 'Made in Australia'?
No. The trade marks must be identical.
What happens to my international application if my Australian application is amended or fails to reach registration?
The international registration will be cancelled or amended to reflect any restriction to the Australian trade mark application. This may include refining the scope of your claim to delete or amend classes. This is because the examination process for your Australian basic trade mark will have started within the five-year dependency period. The International Bureau of WIPO will notify all designated countries of the restriction.
What does a 'central attack' mean?
Central attack is an opposition or similar action taken against an international registration’s basic application in its home country. Central attack can occur during the five-year dependency period that ultimately leads to the restriction or cancellation of an international registration.
Are there any options if my international registration is restricted or cancelled because of a central attack?
You have three months in which to apply directly to each of your designated countries to transform your international registration into a national registration.
How do you 'attack' an international registration after the five-year dependency period?
You would need to challenge the protection granted in each designated country under the national legislation of those countries.
No. Each country will process your designation according to their own national legislation.
Are the classes listed in numerical order in a multi-class application?
No. An application can be filed in all 45 classes if desired.
When can an applicant add classes to an application?
Classes can be added to an application if it is requested in the course of examination in order to rectify a genuine classification error. For example, if an applicant claims 'detergents for household use and for medical purposes' in Class 3, they have the option of extending the application to include Class 5 which covers 'detergents for medical purposes'. They must pay an extra fee. Alternatively they can delete this item from the application. The addition of extra classes cannot extend the scope of the original application.
What does opposition mean?
Opposition simply means a formal objection has been lodged to a trade mark registration.
Are there fees to file an opposition?
Yes. See fees for opposition proceedings.
Who can oppose?
Anyone can file an opposition.
Why oppose registration of a trade mark application that has been advertised as accepted?
The most common reasons for opposition are:
- the application is too similar to another registered or pending trade mark
- there is an international registration seeking to gain, or has gained, protection in Australia and confusion is likely to occur
- if someone believes the trade mark applicant is not the true owner.
How do I change the owner of my international registration?
Change of ownership requests can be made directly to the International Bureau of WIPO. You make one request and pay one fee. The International Bureau will notify all designated countries. You can also lodge your request and pay the fee in $AUD through us if we are your office of origin. Each designated country can refuse to accept the change of ownership in that country if they have particular national requirements that have not been met.
Can I pay my registration or renewal fees online?
How long does trade mark registration last?
A trade mark is initially registered for a period of 10 years in Australia and continues indefinitely as long as the renewal fees are paid every ten years.
How much does registration cost?
Registration fees must be paid within 6 months of advertised acceptance. The trade mark fees page and fee schedule list all applicable fees.
How much does renewal cost?
The trade marks fee page and fee schedule list all applicable fees.
What is ‘revocation of acceptance’?
Revocation of acceptance is the withdrawal of the acceptance of an application. The acceptance of an application can be revoked if information comes to notice after acceptance which indicates that the trade mark should not have been accepted. The application will no longer carry the status 'Accepted' and will re-enter the examination stream with the status 'Under Examination'. The applicant is notified of the proposed revocation and is advised of any conditions under which the application can remain accepted. The applicant is also given the opportunity to be heard in the matter. One month is given for the applicant to respond. If no response is received, acceptance is revoked and the revocation is advertised in the official journal.
What are the reasons for revocation of acceptance?
An application can only be revoked if the Registrar is satisfied that it is reasonable to do so. The Registrar takes account of all the circumstances involved, such as an error or omission made during the course of examination. If information is received from examination staff, third parties or others with specialised knowledge that calls into question the acceptance of the trade mark, the application may be revoked. A change of opinion or failure to consider earlier precedent cases is not held to be an omission.
What is the purpose or usefulness of series applications?
Under the Trade Marks Act 1995, you can apply for two or more trade marks that closely resemble each other on one application. This gives you the option of covering different variations of your trade mark without having to submit separate applications for each variation. However, not all trade marks that closely resemble each other will qualify as a series. There are substantial restrictions on the type of trade mark variations that can form a valid series.
What constitutes a valid series application?
Firstly, trade marks in a series must closely resemble each other. Secondly, the trade marks must differ only in one or more of the following ways:
- statements or representations as to the goods or services being claimed
- statements or representations as to the number, price, quality or names of places
- the colour of any part of the trade mark.
With these substantial restrictions on what sort of trade marks can form a valid series and additional costs involved in filing a series application, you should carefully consider whether your trade marks meet the requirements before you file. If the series you file is not valid, the series fee is not refundable.
Is a series application more expensive?
Yes. For more information read the trade mark fee schedule.
Can an applicant create a series application out of a standard application?
No. Trade mark applications cannot be amended to expand on the scope of the rights originally claimed. You cannot add other trade marks to your original application. This may unfairly disadvantage other traders who have based business decisions on the goods and services your trade mark originally covers.
Where can I find additional information and examples of valid and invalid series applications?
Further information and examples may be found in the Australian Trade Marks Manual of Practice and Procedure. This is a reference manual used by trade mark staff at IP Australia.
I have registered my plant variety under PBR and have given it a PBR name. I want to register some different words as a trade mark. Can I do this?
It is possible for different words to operate as a trade mark, even if they are applied to a single plant (your registered PBR variety). The words should be used to indicate the plants of one trader, rather than name the plant (which may be obtained by that name from a number of traders). However, if the words are simply replacing the PBR registered name, they will be difficult to register as a trade mark.
I saw a plant trade mark registration with an endorsement saying it wasn't to be used as the name of a plant variety. I know the trader is using it in this way. Does this trader have trade mark rights?
This endorsement is called a condition of registration. If the trader is not complying with the condition of registration, not only will their registration not function as a trade mark, but their trade mark rights could be open to challenge.
If I am the breeder of a new plant and have made up a name for it, why can't I protect the name as a trade mark?
Even though you have invented or contrived the words you are applying to the plant, the issue is the way those words relate to the plant. If the words are applied to the plant for the purpose of naming or describing that particular plant, it cannot act as a trade mark because it will not fairly distinguish the goods of one particular trader.
Why was my trade mark application rejected on the basis that it is a plant name when another one that I know is in use as a plant name was accepted?
All applications undergo the same examination process. If there is no clear evidence of use as a plant name available at the time of examination, an application may be accepted. However, if the owner of that trade mark subsequently uses it to name or describe a single plant, not only will their registration not function as a trade mark, but their trade mark rights could be open to challenge.
I filed my trade mark in colour. Does filing a colour representation limit my rights in my trade mark?
Not usually. Unless otherwise specified, trade marks are registered in respect of all colours whether or not you filed your trade mark in colour. Section 70 of the Trade Marks Act 1995 specifies that a trade mark may be registered with limitations as to colour. The limitations may be in respect of the whole, or a part, of the trade mark. You may file your trade mark application in black and white, greyscale or colour.
Can I use my trade mark in other fonts?
Protection given by registration of a work in ordinary typescript or basic cursive handwriting is likely to extend to that word in other commonplace fonts or obvious presentations. If your registration is for a word in plain typescript and you use your trade mark in a very unusual or fanciful font you may not be covered by your registration. Similarly, if your registration is for a word in a fanciful or particular unusual font and you may use your trade mark in a different fanciful or unusual font this may not be covered by your registration. If you would like clarification on this issue you may wish to seek legal advice from a trade mark attorney or a legal practitioner familiar with trade mark law.
What is a ‘fancy’ trade mark?
There is no ‘type’ of trade mark known as a ‘fancy’ trade mark. It is an indexing term, used to describe a highly-stylised part of a trade mark. The term is sometimes used on the Australian trade mark search to describe an unusual font.
What are the requirements when applying for sound and scent trade marks?
To be registrable a trade mark must be able to be represented graphically. This also applies to sound and scent trade marks. This means a trade mark must be able to be represented by symbols in the form of diagrams and/or writing.
- Sound trade marks must be represented by a precise description of the sound. If the trade mark contains music then it can be represented by musical notation and accompanied by a description. An example of this would be 'the trade mark consists of the tune as played on a trombone'.
- A sound can also be represented by words (for example ‘clip, clop, moo’) and must include an accurate description of the trade mark. For example 'the trade mark consists of the sound of two steps taken by a cow on a pavement, followed by the sound of a cow mooing'.
- Scent trade marks can be represented by a precise verbal description of the scent. For example 'the scent of apple blossoms'.
What is a collective trade mark?
A collective trade mark is a sign used or intended to be used in relation to goods or services provided by members of an association. A collective trade mark serves to distinguish those goods or services from goods or services provided by persons who are not members of the association. Unlike certification trade marks, the use of collective trade marks is not required to be subject to rules.
Who can apply for a collective trade mark?
An association, whether incorporated or not, may apply for a collective trade mark. The application must be made in the name of the association and not in the name of an individual or individuals. Associations may choose to apply for standard trade marks, since collective trade marks cannot be assigned, transferred or sold. Anyone can apply for a standard trade mark.
What limitations are there on the use of 'Olympic' trade marks?
The Olympic Insignia Protection Act 1987 states that the Australian Olympic Committee (AOC) is the national owner of the Olympic rings symbol and the Olympic motto. The AOC also owns ten registered Olympic designs and a number of torch and flame designs. Only the AOC can use and license the use of the symbol, motto and Olympic designs to other parties. The Olympic Insignia Protection Act 1987 was amended in October 2001 and in part now protects the use of the words ‘Olympic’, ‘Olympiad’ and their plurals and ‘Olympic Games’ in advertising and promotion. A licence is required from the AOC to use these Protected Olympic Expressions.
What are shape trade marks?
Shape trade marks are three-dimensional. Examples of shape trade marks include bottles, toothbrushes, biscuits, chocolates and pens.
What should I consider if I am filing a shape trade mark?
You need to consider if the shape is functional and is something that other people need to use in the course of their work. Does an object have to be that particular shape if it is to work properly? You also need to consider if the shape is common to the trade. A wine bottle is one example.
If a shape trade mark falls within these parameters then there may be difficulties in registering it. The applicant will need to show the shape is not functional, but rather distinguishes their good/services alone. That is, that the shape itself will identify the goods/services as originating from the applicant.
What should I consider when applying for a colour or colour combination as the actual trade mark?
- In order for a colour or colour combination to be a valid trade mark, there should be no genuine need for the colour to be used within the relevant market. For example, manufacturers within the industry would typically colour their products this way.
- The colour must not be essential to the use or function of the product. For example, yellow or orange are usually used for safety products.
If a colour trade mark falls within these parameters there may be difficulties in trying to distinguish that colour from other colours, and therefore there may be difficulties in registering the trade mark. The applicant will need to show that the colour does distinguish their good/services. That is, the colour/s will identify the goods and/or services as originating from the applicant. This will be through the provision of evidence of use. The examiner of the application or a legal practitioner can be contacted for further information.
What types of things make trade marks difficult to register?
- kind - including the name of the goods or services and any component which indicates the size or type of goods or service. For example ‘sedan’ for cars.
- quality - laudatory words which are commonly used by traders to extol the virtues of their goods or services. For example, ‘superior’, ‘good’, ‘best’ and ‘number one’.
- quantity - indicating quantity, including reference to numerals, are needed to indicate volume, area, model or batch number, and would be unlikely to function as trade marks. For example ‘25s’ for cigarettes.
- intended purpose – using words which describe the function of the goods or the result of a service are not capable of distinguishing. For example, ‘sticks to metal’ for glue; ‘roach-free’ for a pest control service.
- value – using words which emphasise the worth, importance or value of a product or service. For example ‘worth their weight in gold’.
- time of production - trade marks which refer to a time frame when the goods were produced or when the services are to be available. For example ‘ready in one hour’ for dry-cleaning services.
- geographic origin - geographical names can potentially be registered, but traders will generally not be able to obtain a monopoly on the name of a place or region with a reputation for the designated goods or services unless overwhelming evidence of use is provided. For example ‘Hunter Valley’ for wines
- surnames – can be difficult to register depending on how common the surname is.
Although these types of trade marks may have grounds for rejection raised against them in an examiner's first report, these may be overcome through the provision of evidence of use or other special circumstances.