Top Tips for Creating Your Trade Mark

A trade mark can be a valuable asset for any business. Google’s trade mark, for example, is worth an estimated $167.7 billion, while Facebook’s trade mark, ranking only fifth, has an estimated value of $88.9 billion!^[1] Even if your business is not aiming to be the next Google or Facebook, your branding is still important and valuable and can be more so if you can create a good trade mark.

A trade mark is a sign or symbol used to identify a brand. If you can obtain registration of your trade mark you will have exclusive use of that trade mark, and anyone who uses a substantially identical or deceptively similar sign or symbol in relation to goods or services that are the same or similar to yours will be infringing your trade mark.

This article outlines some important considerations in creating your trade mark to give it the best chance of registration and afford it the best protection.

Create a ‘distinctive’ trade mark

Although there is an obvious temptation to use a word or words that are suggestive of the product or service to which a trade mark will relate, in order to be capable of registration, your trade mark needs to be distinctive and not obviously related to the goods or services for which it is to be used. To put this another way, it must distinguish your goods or services from those of your competitors, and it cannot describe your services.

For example, Apple was initially denied a trade mark for the words ‘APP STORE’ as this phrase would be understood by consumers to be descriptive of a store which sells Apps.

Not only will a descriptive trade mark be at risk of rejection for registration by IP Australia, but there is also a danger that others will want to use the same sort of description. Where close variations to your trade mark are used in a describing way they may be able to be used by others without infringement.

What marks are distinctive?

So, what sort of trade marks will be distinctive?

Invented words make the best trade marks, as do unique combinations of words. Also, using a common word which is entirely unrelated to your product, such as VIRGIN in relation to an airline or credit card, can create a distinctive trade mark in relation to those goods or services.

Trade marks which include a graphic element (a logo or device) can assist to create distinctiveness, in some cases even if a descriptive word or words are contained in the logo. However, this is not a failsafe; if the word or words are the main distinctive part of a composite word and device mark, this may still not overcome problems of distinctiveness. It will also not prevent infringement, or overcome problems with getting your mark registered if there is a prior registered mark with the same or substantially the same word(s).

It is, however, possible that a mark that is not inherently adapted to distinguish can in fact come to distinguish goods or services if it is sufficiently used. This is how even relatively poor trade marks, if they have substantial capital backing and use to make them well known, can be registered and enjoy a monopoly, restricting other traders from using the descriptive terms. A good example of this is Choice Hotels International Inc’s registration of CHOICE HOTELS even though on its initial application it was refused registration on the basis that is was not inherently adapted to distinguish.

Ensure your trade mark is not similar to others

If your trade mark is substantially identical or deceptively similar to an existing trade mark it is likely to be rejected by IP Australia or, if initially accepted, might face opposition by the owner of the similar mark. A trade mark will be deceptively similar where the impression of the imperfect recollection of a consumer which is carried away and retained might lead to a mistaken belief that the trade marks are from the same source. To determine whether a trade mark is substantially identical a side by side comparison needs to be made, looking at the visual and aural aspects of two marks and how these aspects are similar or dissimilar.

It is also possible that if your trade mark is similar to an existing one you could be found to be engaging in misleading or deceptive conduct or passing off your brand as that of another.

This is why undertaking availability searches is so important. It is of no benefit to build value in a trade mark only to find you have always been infringing another or were never likely to obtain the protection afforded by registration.

Be aware of the prohibitions & restrictions

A trade mark will be rejected if it is scandalous or contrary to law.

A scandalous mark is one which has an element of personal abuse or incorporates racial or ethnic abuse. Trade marks which indicate religious intolerance or abuse will also be rejected as being scandalous. This was highlighted in an American case in which six trade mark registrations of the word REDSKINS were cancelled, despite long term use by the applicant, the Washington Redskins American football team, as they were perceived as being disparaging or offensive to Native Americans.

Trade marks that are likely to deceive or cause confusion will be contrary to law and not accepted. Aside from the obvious confusion that might be caused by similar trade marks, using a geographical indication on a product when it does not come from the location represented by the geographical indication may also be a ground for invoking this ground of rejection. Another example is a trade mark which uses a famous person’s name or image to connote a connection between the goods and services and that person where there is no such connection.

While an uncommon surname can make a good and unique trade mark, common surnames are quite the opposite. The more common the surname the less inherent adaption to distinguish it will have. Where the goods or services to which the surname is to be applied as a trade mark are also common there is little chance that the trade mark will be accepted by IP Australia.

There are also specific prohibited signs to consider such as flags, the Geneva cross, official signs and emblems.

Make your application with confidence

There is little point in creating a trade mark which is not registrable or might be able to be used by other businesses. So, make sure your mark is distinctive and does not describe your goods or services. With the help of a professional you can obtain comprehensive searches to ensure that your trade mark is as unique as you think and doesn’t contravene any prohibitions.

Then, you can feel more confident in making an application to register your trade mark and, if the need arises, enforcing it.