Grounds for Rejection of Trade Mark Applications

Registering a trade mark is essential for protecting your brand, but not all applications are approved. The Trade Marks Act 1995 sets out specific grounds under which an application may be rejected. Understanding these grounds can help applicants strengthen their trade mark applications and avoid unnecessary delays or rejections.

Trade Marks Containing Certain Signs (Section 39)

A trade mark application will be rejected if it contains or consists of:

• A sign prohibited under Section 18 of the Act.
• A prescribed sign that should not be used as a trade mark.
• A sign that closely resembles a prohibited or prescribed sign to the extent that it is likely to be mistaken for it.

This provision ensures that trade marks do not incorporate restricted signs or symbols that could mislead consumers or violate legal protections.

Trade Marks That Cannot Be Represented Graphically (Section 40)

A trade mark must be capable of graphical representation to qualify for registration. This means that:

• The trade mark should be visually identifiable, such as a word, logo, shape, or symbol.
• If a trade mark cannot be depicted in a clear and visible format, it will be rejected.

For example, certain sounds, scents, or movements may require special representation methods to meet registration requirements.

Lack of Distinctiveness (Section 41)

A trade mark must be capable of distinguishing the applicant’s goods or services from those of others. The Registrar will evaluate:

Inherent Distinctiveness

• A trade mark is inherently distinctive if it consists of unique or invented words, symbols, or designs.
• Commonly used words or generic terms are not inherently distinctive and may be rejected.

Acquired Distinctiveness

• If a trade mark lacks inherent distinctiveness but has been extensively used and recognized as identifying the applicant’s goods or services, it may still qualify for registration.
• The applicant must provide evidence of extensive prior use, such as sales records, advertising campaigns, and consumer recognition.

If a trade mark consists solely of descriptive terms (e.g., “Best Coffee” for a coffee brand), it is unlikely to be registered unless it has gained distinctiveness through long-term use.

Scandalous or Illegal Trade Marks (Section 42)

An application will be rejected if the trade mark:

• Contains offensive, obscene, or scandalous content.
• Is associated with illegal activities or its use would be contrary to Australian law.

For example, trade marks promoting unlawful substances or discriminatory content will not be accepted.

Deceptive or Confusing Trade Marks (Section 43)

A trade mark must not mislead or confuse consumers. It will be rejected if:

• It falsely suggests a quality, origin, or characteristic that is untrue.
• It is similar to an existing trade mark and could cause confusion among consumers.

For instance, a trade mark that falsely implies official government endorsement or a misleading geographical origin may be denied registration.

Identical or Deceptively Similar Trade Marks (Section 44)

A trade mark application will be rejected if it is:

• Identical to an already registered trade mark for similar goods or services.
• Deceptively similar to another registered trade mark, creating a likelihood of confusion among consumers.

Exceptions

An application may still be accepted if:

• The applicant can prove honest concurrent use of the trade mark with the registered mark.
• The applicant had continuous prior use of the trade mark before the competing mark’s priority date.

For example, if two businesses have been using similar trade marks in different regions without conflict, the Registrar may allow registration with restrictions.

How to Strengthen Your Trade Mark Application?

To improve the chances of approval, applicants should:

• Conduct a comprehensive trade mark search before applying to identify potential conflicts.
• Choose a trade mark that is distinctive, unique, and not descriptive.
• Provide evidence of extensive prior use if claiming acquired distinctiveness.
• Ensure that the trade mark does not contain prohibited, misleading, or scandalous content.

If you’re considering trade mark application, get in touch with our expert team today. We’ll guide you through the process from start to finish, making sure your brand is protected wherever your business goes.