Choosing a trade mark – Part 1: Tips for selecting a strong mark
There are so many things to consider when launching a new business, product or service. Choosing a trade mark can be a very exciting step, but it is important to get it right from the outset.
Firstly, you could put together a list of potential marks and then go through and consider the relative strength of each mark; a strong or distinctive mark is easier to register and to protect.
To choose a trade mark that is inherently distinctive, try to avoid names that refer to a geographical location where the business is, or could be, carried out. For example, DUBBO IRONING SERVICE is not a distinctive trade mark because any number of IRONING services might wish to do business in Dubbo and legitimately use this trade mark. There are some situations where geographical names may form distinctive trade marks. For example, NORTH POLE for bananas is distinctive because banana producers would not conceivably need to use this trade mark.
Invented words are usually inherently distinctive so long as they do not directly describe the goods or services that they are used in connection with. For example, XEROX® for photocopiers is highly distinctive. However, ROHOE for an agricultural implement that functions as a rotary hoe was found to be lacking in inherent distinctiveness.
Laudatory words that would normally be used to describe goods or services in exemplary terms usually lack inherent distinctiveness. For example, HIGH PERFORMANCE for cars, EXTRA FRESH for fruit and vegetables and HIGHLY CONFIDENTIAL for private investigation services are all lacking in inherent distinctiveness.
Surnames are not usually registrable unless they appear less than 750 times on the Australian electoral role. The name of a person, especially if it is a name that is considered common, is not usually registrable unless it is represented in some unusual manner.
Once you have your shortlist, you can get more tips by reading our next blog post “Choosing a Trade Mark – Part 2”.