Trademarks are covered by the Trade Marks Act 1994 and are defined as follows:
“In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.”
The Trade Marks Act 1994 also allows for the registration and protection of the following marks:
- Certification mark: Marks used to verify that a good or service was provided by members of a particular union or organisation (see section 50).
- Collective mark: Trademarks or service marks used to indicate membership in a union, association, or other organisation (see section 49).
Trademark classification is also used to determine the level of protection that a mark will receive. Trademarks are classified under the following four terms, listed in order of most to least protection:
- Distinctive: The strongest mark, distinctive trademarks include terms which are created specifically for trademarking purposes. A distinctive mark has no other meaning outside of the product or service that it describes, and the word used in the mark (e.g. Skittles) was not a real word prior to association (i.e. can’t be found in the dictionary). Words used in distinctive marks must bear no resemblance to real words.
- Arbitrary:Common words or symbols with no relation to the product or service which take on a new meaning as a result of association are included under arbitrary marks. Examples of arbitrary trademarks include brands such as Apple and Amazon.
- Suggestive: Trademarks which describe a product or service indirectly can be considered suggestive marks. These can include product names such as Band-Aid or Google, but do not include any direct descriptions. Suggestive marks are the second weakest trademark.
- Descriptive:The weakest mark, descriptive trademarks require proof of a secondary meaning in order to be valid. These are generally difficult to register. The mark (e.g. American Airlines) must be shown to achieve a higher meaning through its use before being considered for trademark registration, or can become a distinctive mark through the addition of other elements to the name or logo.
Items not allowed to be trademarked include content which is offensive, contains curse words or pornographic images, describes the goods or services it relates to, is misleading, is a 3-dimensional shape associated with the trademark (e.g. can’t trademark the shape of an egg for eggs), is too common or non-distinctive, or looks too similar to state symbols such as flags or hallmarks, as defined by the World Intellectual Property Organisation Guidelines.
Trademark classification also requires applicants to choose a class for their trademark. Classes 1-34 apply to goods, and classes 35-45 apply to services. The classification search tool TMClass can help you if you’re unsure in which class your trademark belongs.