What are the requirements for registering a trade mark?

Trade marks that cannot or may be hard to register

The following types of names might be difficult to register, or simply cannot be registered as trade marks:

• a person's surname, if it is a common name
• a word that is descriptive of products or services, such as 'organic', since everyone should be entitled to use that description
• a trade mark that is deceptively similar to a registered trade mark or one already applied for
• names that are protected and are therefore not available, such as 'Olympic'.

Trade marks that are easiest to register

A trade mark that is an invented word will be easiest to register. Examples are: Google, Toyota, Starbucks, Caltex, Coca-Cola etc.

A trade mark that is a common word, but is applied to identify unrelated goods and services will also be easier to register. Examples are: Apple (used in relation to computers); and Shell (used in relation to petrol and oil products).

Use or intention to use

To register a trade mark, you must already be using it as an unregistered trade mark, or intend to use it.

If you register a trade mark and do not use it, this will be a ground for the cancellation of its registration.

Classes of goods or services

When you apply to register a trade mark, you must nominate the class or classes of goods or services that will be identified with the trade mark.

There are 45 classes under the International Classification of Goods and Services for the Purposes of the Registration of Marks, and you are able to nominate one or more classes in which you intend to use the trade mark.