One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Signs that cannot be protected as a trade mark
A trade mark search is a good preparation step before launching a trade mark application. However, a clear search result does not guarantee a successful application; the fact that a trade mark search failed to find any direct matches may be due to the proposed trade mark containing common or prohibited signs, hence no one has been successful in registering the trade mark before; for the same reason, you wouldn’t be able to register it either.
Common text or images
A trade mark application containing a frequently used word, word component or image is often an orange flag. If the application contains a word, word component or image that others may need to use to describe or represent their own goods or services, then the application is more likely to be rejected on these grounds. A registered trade mark aims to protect a brand, but not to the detriment of others’ legitimate needs; it is only fair to keep frequently used word, word components or images that traders need to use to legitimately describe your goods or services unencumbered for everyone to use.
Signs can be any text or image that represents the origin of the applicant’s goods or services. Such signs can be considered common if the text or image is typically used to describe the goods or services that are being protected. Examples of common signs are:
- Signs indicating the kind of goods or service represented by the trade mark
- Vita B Complex for vitamin tablets containing vitamin B12, vitamin B6, riboflavin and folic acid
- Analytics for data analytical services
- An image of a shirt for cotton and wool shirts
- Signs indicating the quality of goods or service represented by the trade mark
- Waterproof for water-resistant jackets
- Trending for news program services
- Signs indicating quantity
- 24K for jewelry containing gold
- 365 Gigapixel for photography services
- Signs indicating the intended purpose of the goods or service
- SaveData for thumb drives
- AcneClear for dermatological services
A generic trade mark composed of common texts or symbols may become distinguishable if it is combined with text or a symbol that can make the combination less generic. For example, the image of a shirt combined with the text electronica may become less generic for cotton and wool shirt goods.
Geographical names on a trade mark application can become a problem, specifically when the geographical name is known to be linked with a particular product or service. Examples of such names are Sunraysia for grapes and Queensland for mangoes.
The applicant may be compelled to defend the use of a geographical name to successfully register the trade mark. A geographical name may be accepted as a trade mark if the applicant can prove that:
- the name has been used; and
- the public recognises the geographical name as a trade mark.
Business names with the surnames of the business owner are not rare. It is also a recommended practice to apply for a trade mark to protect the business name. A common surname in Australia, however, can pose a problem for the trade mark application. This is because there will be many people who may want to use the surname as part of their business or as part of their product or service name. Examples of common Australian surnames are Taylor, Smith, or Miller.
As in the case of geographical names, the applicant may submit an evidence of use report to show that the surname has been used and is recognized as a trade mark to defend the use of a common surname in the applicant’s trade mark.
Prohibited text or images
Whilst a trade mark application may avoid commonly used text or images, it would still be rejected if it contains prohibited content. Examples follow:
- Class 36 services which are subject to:
- The Banking Act 1959, Section 66 (“Restriction on the use of certain words and expressions”
- The Banking Act 1959, Section 66A (“Restriction on use of expressions authorised deposit‑taking institution and ADI”)
- The Life Insurance Act 1995, Section 16E (“Restriction on use of expression friendly society”).
- State flags or emblems of countries subject to the Paris Convention for the Protection of Industrial Property, Article 6ter.
Class 36 restricted words
Financial services are all found in Class 36, which includes the following:
- Financial affairs
- Monetary affairs
- Real estate affairs
Examples of terms that are not allowed for use in trade marks are:
- ADI / Authorised Deposit-Taking Institution
- Bank / Banker / Banking
- Building Society
- Credit Society
- Credit Union
- Friendly Society
The term is not allowed for use, even if the term is part of another word or phrase. Examples of these may be BankBook or Friendly Society Lending Agency. Exceptions are given to the acronym ADI where ADI may be contained in words like Circadian, Dyadics, or Palladium.
The Australian Prudential Regulatory Authority (APRA) regulates the use of these restricted terms. As a rule, APRA only allows authorised financial institutions to apply for trade marks using the restricted terms.
Article 6ter prohibited signs
Article 6ter of the Paris convention, of which Australia is a signatory, was established to protect the emblems and armorial signs of its member states. The scope of protection outlined in Article 6ter includes:
- Armorial bearings;
- State emblems; and
- State official signs and hallmarks.
Under Article 6ter, a member state must:
- refuse to register a trade mark that consists of or contains a notified sign as well as any trade mark that has a certain similarity to a notified sign;
- invalidate any registrations for trade marks that consist of or contain notified signs;
- provide effective means to stop unauthorised use of notified signs;
- extend protection to the flags of the member states regardless of whether they have been notified;
- if they intend not to extend protection to a notified sign, communicate such an intention within 12 months of notification;
- make a list of those signs that have been notified available to the public.
Scandalous trade marks
Under Section 42 of the Trade Marks Act 1995, a trade mark application must be rejected if (a) the elements of the trade mark includes scandalous material. However, what constitutes scandalous material is not elaborated in the act. The definition may be too broad or too subjective and thus is usually decided on a case-to-case basis.
In general, trade marks that are considered scandalous are those that include profanity, religious iconography and connotation, overt sexual content or innuendo and racial slurs, as well as those that incite violence and terrorism and promote criminal activity.
However, several previous rulings in the Australian courts (such as in the case of POMMIEBASHER, which the examiner deemed to be a colloquialism rather than an invective), seem to indicate that scandalous trade marks is different from trade marks that are in poor taste.