How to choose a strong trade mark

The strongest trade marks are distinctive, memorable, and easy to enforce. A well-chosen mark is more likely to pass examination, less likely to conflict with existing registrations, and far easier to protect against copycats. A poorly chosen one can cost you thousands in objections, rebranding, or infringement disputes before you even get off the ground.

This guide explains what makes a trade mark strong from a legal and commercial perspective, and how to avoid the most common mistakes business owners make when choosing a brand name or logo.

The spectrum of distinctiveness

Not all trade marks are created equal. Australian trade mark law — and trade mark law in most countries — ranks marks on a spectrum from weakest to strongest. Where your mark sits on this spectrum has a direct impact on whether it can be registered, and how effectively you can enforce it.

Generic marks — not registrable

A generic mark is the common name for the goods or services themselves. You cannot register a generic term as a trade mark because no single trader should have a monopoly over the word everyone uses to describe the product.

Examples:

• BICYCLE for bicycles
• COFFEE for a cafe
• SHOES for footwear

Generic marks are never registrable and should always be avoided.

Descriptive marks — very difficult to register

A descriptive mark directly describes the goods, services, or a characteristic of them — such as their quality, purpose, or geographic origin. IP Australia will typically raise a Section 41 objection against descriptive marks.

Examples:

• FRESH FRUIT for a fruit delivery service
• SPEEDY COURIERS for a courier business
• BEST QUALITY for any product

Descriptive marks can sometimes be registered if you can demonstrate that they have acquired distinctiveness through extensive use — but this is difficult and expensive to prove. It is almost always better to start with a stronger mark.

Suggestive marks — registrable, but proceed with care

A suggestive mark hints at a quality or characteristic of the goods or services without directly describing them. The consumer has to use a degree of imagination to make the connection. These are generally registrable and can be commercially effective.

Examples:

• GREYHOUND for a bus service (suggests speed)
• NETFLIX for a streaming service (suggests internetflix/films)
• AIRBNB for accommodation (suggests air mattress + bed and breakfast)

Suggestive marks offer a good balance between commercial relevance and legal strength, but the line between suggestive and descriptive is not always clear. If in doubt, get advice before filing.

Arbitrary marks — strong

An arbitrary mark uses a real, existing word that has no connection to the goods or services it is used for. These are inherently distinctive and easy to register.

Examples:

• APPLE for computers and electronics
• AMAZON for an online marketplace
• SHELL for petrol and energy

Arbitrary marks are excellent choices. They are distinctive from the outset, making registration straightforward and enforcement easier.

Fanciful or invented marks — strongest

A fanciful mark is a completely made-up word with no pre-existing meaning. These sit at the top of the distinctiveness spectrum and offer the strongest legal protection.

Examples:

• KODAK for cameras
• XEROX for photocopiers
• SPOTIFY for music streaming

Invented marks are the hardest for competitors to argue they have a legitimate reason to use, making them the easiest to enforce.

What makes a strong trade mark

Beyond distinctiveness, there are several practical factors that contribute to a strong mark.

Memorability

Your mark needs to be something your customers can remember, spell, and find. A mark that is short, easy to pronounce, and has a distinctive sound or rhythm will generally perform better than one that is long, complex, or easily confused with other brands.

That said, memorability alone is not enough. A memorable but descriptive mark — like "Best Pizza" — will still face registration problems.

Enforceability

A strong mark is one you can actually enforce. If your mark is too similar to dozens of existing registrations, you will struggle to take action against infringers because your scope of protection will be narrow. Conversely, a highly distinctive mark gives you a broader scope of protection and stronger grounds for enforcement.

Think about enforceability from the start. Ask yourself: if someone started using a similar name, would I be able to stop them?

Commercial fit

Your mark should work across the channels where your customers will encounter it — on packaging, in search engines, on social media, and in conversation. Consider whether it translates well if you plan to expand internationally, and whether the domain name and social media handles are available.

Clearance: search before you commit

One of the most expensive mistakes a business owner can make is falling in love with a brand name before checking whether it is available.

Before you use or file a trade mark, you should:

1. Search the Australian Trade Marks Register — check for identical and similar marks in the same or related classes.
2. Search the internet — look for unregistered use by other traders, including business names, domain names, and social media accounts.
3. Consider related classes — a mark registered in a different class can still block your application or create infringement risk if the goods or services are related.

If someone has already registered a similar mark, you may not only be unable to register yours — you could be infringing their rights by using it. The earlier you identify these risks, the cheaper they are to manage.

If you need help with clearance searches, we can assist.

Common mistakes to avoid

Choosing a descriptive name because it "explains what we do"

This is by far the most common mistake. Business owners naturally gravitate towards names that describe their products or services, but these are the hardest to register and the weakest to enforce. Your trade mark should become associated with your business through use and reputation — it should not need to describe what you sell.

For more on this, read our guide on what happens when a trade mark is rejected as descriptive.

Including a geographic term

Marks that contain the name of a place — even one with no obvious connection to your goods or services — are difficult to register. IP Australia and most other trade mark offices will object to geographic terms because they may need to remain available for other traders in that location.

Copying a competitor's style

Using a competitor's brand as inspiration — even unintentionally — is risky. Industries often develop naming trends (think of how many solar companies use "solar" or "sol" in their name). If your mark is too similar to an existing registration, you face both rejection at examination and the risk of an infringement claim.

Getting emotionally attached before doing due diligence

Many business owners invest heavily in branding, packaging, and marketing before checking whether their mark is available or registrable. If you then discover a problem, rebranding is far more expensive than it would have been to choose a strong mark from the start.

Do your due diligence first. If your preferred mark has issues, it is better to find out before you have printed 10,000 business cards.

Ignoring the goods and services specification

Your choice of mark and your goods and services specification work together. A mark that is distinctive for one category of products may be descriptive for another. When choosing your mark, think about it in the context of the goods and services you will claim.

Word marks vs logo marks

Once you have chosen your brand name, you will also need to decide whether to register it as a word mark, a logo mark, or both. This decision affects the scope of your protection.

For a detailed comparison, read our guide on word marks vs logo marks.

Frequently asked questions

Can I register a common word as a trade mark?

Yes, but only if the word is not descriptive or generic in the context of the goods or services you are registering it for. APPLE is a common word, but it is an arbitrary — and therefore strong — trade mark for computers. It would not be registrable for fruit.

What if my preferred mark is similar to an existing registration?

If a similar mark is already registered, you should get advice before proceeding. Depending on how similar the marks and the goods or services are, you may face a citation during examination, or worse, an infringement claim from the other owner.

Can I make a weak mark stronger over time?

In some cases, a mark that is initially descriptive can acquire distinctiveness through extensive and exclusive use over a long period. However, this is difficult and costly to prove. It is always better to start with a mark that is inherently distinctive.

Does my trade mark need to be a single word?

No. Trade marks can be words, phrases, logos, shapes, colours, sounds, or combinations of these. However, the same principles of distinctiveness apply regardless of the type of mark.

Should I check trade marks in other countries too?

If you plan to expand internationally, yes. A mark that is available in Australia may already be registered in other markets. Checking early gives you more options and avoids costly rebranding later.

Next steps

Choosing the right mark is one of the most important decisions you will make for your brand. If you would like to learn more about the registration process, read our complete guide to registering a trade mark in Australia.

Ready to get started? You can file your trade mark application online or contact us if you would like advice on your mark before filing.

The information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to your circumstances.