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 Trademark 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