Choosing a suitable Trade Mark to register – Not Confusing or Misleading

There are lots of advantages in registering a trade mark. If you want to protect your branding, it’s well worth the cost. That being said, not all trade marks can be registered. IP Australia, the government authority responsible for trade mark registration, is responsible at first to review the application, and consider whether a trade mark can be accepted or not.

The Trade Marks Act 1995 (Commonwealth) sets a list of situations where a trade mark can’t be registered. We have been discussing these on this blog over the last few months, and have already been through a few.

Unsurprisingly one of the reasons why IP Australia would reject an application for the registration for a trade mark is in a situation where the proposed trade mark is either to likely to “deceive or to cause confusion”.

This usually means that if a proposed trade mark looks substantially like an existing trade mark (whether registered or unregistered), then that application must be rejected. It also could mean that if a proposed trade mark gives off the impression of something that isn’t true, then that application must also be rejected. To give an example, in 1937, a company selling radios applied to have a trade mark over Disney’s Mickey Mouse and Minnie Mouse. Disney successfully argued that while the characters weren’t trade marks, there was the suggestion that the product was associated with Disney, when the reality was that it wasn’t.

It’s a pretty common sense approach – don’t apply for a trade mark that looks similar to your competitors, or gives the impression that you are associated with your competitors.

Keep this rule in mind when choosing a suitable Trade Mark to register. Choose carefully, and stay tuned!