Understanding trademark law can be confusing. Trade Mark registration and enforcement is governed by the Trade Marks Act 1995 in Australia. We’ve broken down three questions that trademark attorney Jacqui Pryor commonly get from clients to help you understand the small print.
What can I trademark?
Think of a trademark as a sign. You use a sign to show customers what your product or service is, so they don’t confuse you with another trader and can generally distinguish your goods/services from similar goods/services others. Often referred to as a ‘badge of origin’ – the ‘thing’ (e.g. name, logo, colouring) that allows consumers to recognise the origin of the product or service.
There are limitations to what you might be able to register. If you filed an application for the word ‘computer’ and your company trades in computers it would be denied as it is entirely descriptive. There are other limits, such as registering trademarks that go against the law or are ‘scandalous’.
The Trade Marks Act 1995 has a comprehensive list of what constitutes ‘signs’. For example any one of the following, or a combination:
- Signature, letter, name, word, phrase
- Image/s, number/s
A sign could also be a colour, shape, sound or scent, which may seem unusual. However, so long as that sign is capable of distinguishing your goods/services it constitutes a trademark that may be registrable. There are numerous brands that have done precisely this. For example, Surf Life Saving Australia has registered the use of red and yellow for their uniforms and services. Cadbury likewise has registered the colour purple.
Weber has registered the shape of their barbeques, and O’Brien Glass uses a particular sound in their advertising, which is registered and relates to how their brand harmonised in the advert. There is even a golf brand in Australia that smells like Eucalyptus, and the brand has trademarked the scent.
What trademark symbols can I use?
There are two common symbols you should know about if you are registering a trademark.
- ®, which can be used with registered trademarks. You must have a registered trademark to be allowed to use it.
- ™, which is used to indicate you are using a ‘sign’ as a trademark, and can be used before registration (or generally in use).
So, why would you use the ™ symbol? You would use this trademark symbol to show you are claiming the sign as your trademark, and your clients will be able to identify your business when they see it used. You might use it in countries where registration is not yet complete, or even to help create ‘evidence’ that you use your brand as a trademark where the brand is on the descriptive side. However, you will not be entirely protected unless you gain registration to your trademark.
Here are some recommendations when placing using trademarks and their symbols.
- Use a different typeface or bold your mark when using in a body of text to make it stand out as your brand and instantly recognisable as your mark.
- Always use your trademark as an adjective; it is not a noun. For example, Mark My Words® trademark services rather than simply Mark My Words.
What is a scandalous trademark?
It’s such an unusual term, so it is often queried by those registering marks. It falls under section 42 of the Trade Marks Act 1995 in Australia. It states that a trade mark can be rejected if it ‘contains or consists of scandalous’ matter. Here are some case studies that illustrate how this legality was used. For example, An applicant applied to register ‘KUNT’. It was rejected as it was phonetically the same as an offensive word.
Before you apply to register your mark, ask yourself the following questions, which could alert you to the fact that it is potentially scandalous:
- Does it have a religious connotation?
- Does it include any racial slurs or phrases?
- Does it use profane material or comprise vulgar matter?
- Is it sexual in nature or involve innuendo?
- Does it suggest illegal activity?
Also, ask yourself if the way it is used may offend anyone in your community. Consider who a regular person in the community is, and the ordinary way in which this person would use the term in their daily life. Be mindful that community standards change. In the past, a term may not have been considered racist or offensive, but that could change and eventually lead to a trademark being canceled.
Jacqui Pryor is a registered trademark attorney based in Australia who provides trademark registration services, searches and other matters regarding trademarking. For more information be sure to visit Mark My Words Trademarks