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Trademarks-What Is, and Is Not, Registrable


 

Trademarks may be notionally divided into two groups. The first group are those trademarks able to be registered which include not only those trademarks actually registered, but also those which could be registered if their owners sought registration. The second group is those trademarks that are inherently incapable of ever being registered.

Registrable

A trademark is able to be registered if it is either distinctive of, or is capable of becoming distinctive of, the products or services in respect of which the trademark application is lodged and with which the owner of the trademark is connected in the course of trade.

Three general types of trademarks are specifically permitted to be registered. These are the name of the person represented in a special or particular manner, the signature of the trademark owner or of some predecessor in his business, and an invented word.

An example of a name of a person represented in a special way would be the surname MICHELIN spelled out with a number of small motor vehicle tires forming each letter of the word. An example of a signature is the signature of Johnny Walker appearing on that when a known brand of whiskey. An example of an invented word is the trademark SARD in respect of soap.

 Unregistrable

Trademarks in the second group which are excluded from registration are those which are words having a direct reference to the character or quality of the products, and also those words which are, according to their ordinary meaning, a geographical name, or a surname.

The most obvious example of a word that makes a direct reference to the character of a product is the name of the product itself. This TOPS would not be registrable for clothing since it directly describes a particular type of clothing. However, a trademark such as TUB HAPPY would be registrable in respect of clothing since, although it suggests the clothes wash well, it does not directly describe that particular characteristic. Similarly, a trademark such as PERFECTION would not be registrable for any product since it directly describes the quality of the product. Such a trademark that praises the product is said to be “laudatory”. However, a trademark such as FANTA which is vaguely suggestive of ‘fantastic’ would be registrable since it is not a direct reference to the quality.

Some Examples

Examples of geographical names which are well known trademarks but not registrable nevertheless are YORKSHIRE for plumbing fittings and OXFORD for books.

In relation to surnames, one may well ask ‘How is it that surnames such as McDonald's and FORD are registered?’ 

The answer is that although not initially a registrable trademark, because of the very substantial level of sales able to be achieved by these organizations, what was initially, an unregistrable trademark has been converted into a trademark which has become distinctive through extensive use and therefore registrable for that reason.

Other distinctive marks include logos, such as a three-lobed spiral device used by the International Wool Secretariat or the three stripes on ADIDAS shoes.

Endnote

Generally speaking, numerals are not able to be registered, although 4711 for perfume is an exception because of its extensive reputation gained through sales. Similarly, letters of the alphabet are not able to be registered unless they form a pronounceable word, as is the case with a lot of three-letter trademarks such as LUX and FAB for washing powder. Again, as a consequence of acquired distinctiveness arising through use, e.g. ABC for television services

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For more details on Trademark check Here

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