What can't be a trade mark?

Not every trade mark is registrable

Most commonly, a trade mark may not be registrable for the following reasons:

• it's scandalous
• its use would be illegal
• it's likely to cause confusion 
• it's not sufficiently distinctive
• it's too similar to another trade mark.

Non-distinctive trade marks

A trade mark is non-distinctive if it's something other traders may legitimately want to use. This includes:

• common surnames
• pictures of the goods
• descriptive words or images
• ordinary colours and shapes of the goods
• sounds and scents commonly associated with the goods
• names of geographical locations where goods or services may originate.

Examples:

Descriptive words or images::

• '4x4' for vehicles
• 'Ultra white' for paper
• Sketch of an iron for irons
• 'Juicy oranges' for orange juice
• Photograph of a cat for pet food
• 'Eco-friendly' for recycling services
• 'Global' for freight shipping services.

Geographical names:

• 'Bass Strait' for seafood
• 'Adelaide' for car wash services.

Common surnames:

• Lee
• Smith
• Jones.

Combining non-distinctive words with other material such as a hashtag (#) or domain name terminology (e.g. com.au) isn’t likely to make the trade mark distinctive.

A non-distinctive trade mark can be registered if the applicant can show it has or will become distinctive for their goods or services in the Australian market because of extensive use or intended use. However, the more descriptive the trade mark, the more evidence will be required to justify registration.

Trade marks that are inherently confusing

A trade mark that's likely to deceive or confuse the public because of some inherent connotation, may not be registrable.

For example, a trade mark that contains the words ‘Vegan friendly’ where the goods claimed are beef products, has the potential to mislead consumers as to the suitability of the product for vegan consumption.

Scandalous trade marks

A trade mark that's likely to cause offence to a significant number of Australians may not be registrable.

For example, trade marks that contain racially or culturally offensive material, or otherwise promote hate or mistreatment of a particular group, will be considered scandalous and subject to an objection. 

Trade marks prohibited by legislation

Other Australian laws may prohibit the use or registration of various words or images as trade marks. Examples include legislative prohibitions on the use of terms such as:

• Bank
• Red Cross
• Defence Force words and symbols.

In addition, as a member state to the Paris Convention for the Protection of Industrial Property, Australia may refuse to register trade marks that consist of various words and images of foreign countries and intergovernmental organisations (e.g. UNICEF).