IPA trademark 18.-summary-of-examination-practice-in-relation-to-names — IP Australia Trade Marks Manual of Practice and Procedure – 18. Summary of examination practice in relation to names

Type of Name Practice Common surname SMITH NGUYEN BROOKES Ground for rejection - Yes - although if goods or services are very specialised and surname is not extremely common, mark may be considered prima facie capable of distinguishing. Common surnames with other well-known meanings WOOD Ground for rejection - Depends on circumstances In most cases the fact that a trade mark has another meaning will not provide a rationale for prima facie acceptance (e.g. WOOD will attract a ground for rejection). However may be considered prima facie capable of distinguishing in cases where: the trade mark does not present as a surname there is a history of such marks being accepted without evidence goods/services are specialised Common surname and common single initial C. BROOKES Ground for rejection - Yes The need for other traders to use a common surname with a common initial is less than for the surname on its own but not enough to allow for prima facie acceptance. Common surname and uncommon single initial X. BROOKES Ground for rejection - No It is rare for first names to begin with X and therefore unlikely another trader will need to use X. BROOKES Common surname and two initials B.J. BROOKES Ground for rejection - No The possibility of another trader wanting to use a specific combination of two initials even with a common surname is considerably less than for the surname on its own or with a single, common initial. Uncommon surname with or without initials Ground for rejection - No Full names of persons JOHN SMITH SUE JONES BILL WONG GEORGE BROOKES ​​​​​​​ Ground for rejection - Yes – although if goods/services are specialised and surname is not extremely common, trade mark may be considered prima facie capable of distinguishing. Ground for rejection – Yes- although if goods or services are specialized and surname is not extremely common, trade mark may be considered prima facie capable of distinguishing. Ground for rejection may exist, depending upon nature of goods or services. Ground for rejection – only in rare circumstances Acceptable unless name as a whole is extremely common and the goods/services are also commonplace e.g. JOHN SMITH for clothing would require a ground for rejection.