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Trade marks are a powerful asset for small businesses

A trade mark is used to distinguish your goods and services from those of another business. Registering a trade mark offers you the exclusive legal rights to use, license and sell your trade mark, and take action against other businesses using it. Trade marks can be a brand name or logo, or any other sign that your business is known for. 

A decision to protect your brand early can prevent additional stress and expenses arising from rebranding from a potential later infringement.

When applying to register a trade mark, it’s important to know about one of the most common issues with applications — distinctiveness.

Distinctive brands are easier to trade mark… but what does that mean?

The Trade Marks Act 1995 requires that for a trade mark to be registered, it can’t be something that other businesses are likely to want to use.

As a rule of thumb, your brand has to be distinctive, not descriptive to be registrable as a trade mark. You may be able to think up some businesses that seem to have managed to get something descriptive registered, such as ‘Sydney Film School’. It is possible, but it is a lengthy process involving evidence that your brand has acquired distinctiveness through marketplace use.

Ultimately, the more distinctive, the stronger the trade mark, which will help safeguard it from being challenged in the future.

Drilling down, how do I know whether my brand is distinctive enough?

Ask yourself these two questions:

  • What would an average Australian think of when they see these words? Is it distinctively my brand to them?
  • Is it likely that others would want to use those words in connection with selling similar goods/services?

These questions apply specifically to the goods/services you’re trading in—that’s why ‘Apple’ can be a trade mark for a computer company but not for a fresh fruit company; other computer companies aren’t honestly looking to use the word ‘apple’ in the ordinary course of their business, but fruit farmers and grocers are.

What should I avoid when coming up with a distinctive brand?

It can be difficult to register a trade mark if it:

  • Describes your goods and services
  • Describes the kind, quality, or purpose of your goods and services
  • Consists only of a common surname or place name
  • Is a single letter, number, or common acronym

What are the other tests for trade mark registrability?

If the name, logo, sign, graphic design or phrase you want to trade mark is any of the following, it is unlikely to be accepted

  • Similarity: is it similar to other registered trade marks or pending trade mark applications? You can check this with IP Australia’s new free trade mark checker.
  • Deception or confusion: is it confusing or misleading for customers?
  • Offensiveness and regulated signs: is it likely to offend customers and/or does it use a regulated sign (like the coat of arms)?