Contrary to popular belief, the assessment of trade marks for registrability is more art than science, and applicants may find that their trade marks are deemed unregistrable, a result which can be avoided if proper checks are made.
Here are 3 of the most common reasons why an application to register a trade mark may be rejected:
- The trade mark is similar/identical to earlier trade marks;
- The trade mark is not distinctive; and
- The trade mark is deceptive.
1. The trade mark is similar/identical to earlier trade marks
If your trade mark is similar or identical to trade marks that are already pending registration or have been registered in relation to the same goods and/or services, it cannot be registered.
This is because allowing the registration of similar or identical trade marks would risk confusing the public.
Examples of similar marks are “NUTELLA” and “NUTELLO”, and “CAREFREE” and “CAREREE”.
2. The trade mark is not distinctive
Generally, if your trade mark is not distinctive, it cannot be registered.
This is because such marks do not help to differentiate a trader’s goods and/or services from those of other traders, so there is no reason why they should be protected at the expense of other traders.
Examples of indistinctive marks are descriptive marks and generic marks.
Descriptive marks are marks which describe the characteristics of the goods and/or services covered. For instance, where the word mark “BREATHABLE” is used in relation to sanitary napkins, it is a descriptive mark as it describes their quality.
Generic marks are marks which have become a common name in the trade for the goods and/or services covered. For instance, since talking machines with discs are now commonly known as gramophones, the word mark “gramophone” is a generic mark if it is used in relation to such machines.
3. The trade mark is deceptive
If your trade mark is deceptive (e.g. as to the nature, quality or geographical origin of the goods and/or services), it cannot be registered. This is because protecting such marks is contrary to public interest. Examples of deceptive marks are “CHINA-THERM” for insulated plastic cups and “STEELSCREWS” for screws that are not made of steel.