A quick guide to choosing a word for use as a Trade Mark

Whilst it is possible for a business to adopt a trade mark for its goods and services without registering the mark, it is preferable to obtain registration of the trade mark.

To ensure that a trade mark is registrable in Australia from the outset, you should not adopt a word mark that is descriptive of the goods or services. That is, do not pick a trade mark that other businesses should rightly be able to use. Examples of trade marks that wouldn’t be registrable in Australia are “orange” for fruit juice, or “food-truck” for mobile fast food services. This is because other traders are likely to need these words to describe the goods and services that they offer.

Geographic or location names are usually difficult to register, especially when the place has a reputation for goods or services. COFFS HARBOUR for example, would not be registrable as a trade mark for bananas, because bananas are grown by many traders in that location. However, NORTH POLE would be registrable for bananas, as bananas do not grow there.

It is possible to adopt a word as a trade mark where it has a known meaning, but it is for use with goods or services for which it is not descriptive. For example, “food-truck” would be registrable for clothing, assuming no one else is using an identical or similar trade mark for clothing. Examples of well-known word marks that have no relation to the goods or services to which they are applied are APPLE for computers and JAGUAR for motor vehicles.   

Types of words that can be registered from the “get-go” are marks that are invented (made-up), and therefore are not descriptive of the goods or services. For example, the trade mark ACROGON is invented and has no known meaning, and therefore it was registrable from the outset for intellectual property services. Some well-known examples of invented marks, include PEPSI, SONY, and XEROX.

Hope this helps in adopting a word for use as trade mark.

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