When is a trademark not registrable?
When can’t I register my trademark is a common question we hear! So we thought we’d set out some examples of trademarks that are not usually registrable.
After you submit your application for a trademark registration online, an examiner at the IP Office will evaluate it. If it does not meet the requirements to be registered, you will receive notice of a trademark objection. (Often these objections are not fatal, but it pays to do some homework at the outset so you don’t apply for a trademark that is not registrable.)
It’s unlikely you will be able to register your trademark if:
1. There’s an existing conflicting mark on the register
There’s an identical or confusingly similar trademark already on the register that covers the same or similar goods or services to yours.
Eg: DELIVEROO for delivery services vs DELIVER-O for transport services
2. There’s an existing well known mark
Your trademark is identical or similar to a well known trademark (and you’re taking advantage of their reputation).
Eg: ALL BLACKS DELIVERY for delivery services vs ALL BLACKS (well known mark)
3. Your mark is descriptive
Your trademark describes the goods or services you provide.
Eg: THE DELIVERY COMPANY for delivery services
4. Your mark is non-distinctive
Your trademark is commonly used in your industry and should be available for others to use.
Eg: TAKEAWAYS NOW for delivery services
5. Your mark describes characteristics or quality of your goods or services
Eg: SPEEDY DELIVERIES for delivery services
6. Your mark is laudatory or complimentary
Your trademark contains superlative words (such as AWESOME, EXTRA)
Eg: SUPER DELIVERY
7. Your mark is confusing or deceptive
Your trademark is likely to confuse or deceive the public.
Eg: SWISH E-VEHICLE DELIVERY (when you deliver by van)
8. Your mark is offensive
Your trademark is likely to offend the public. See also the guidelines for Maori trademarks.
Eg: SH*T-HOT DELIVERIES