Non-Traditional Trade Marks

Non-Traditional Trade Marks
Barry Meskin
  • Barry Meskin - Principal, Patent & Trade Mark Attorney
  • Principal, Patent & Trade Mark Attorney "Providing commercially relevant patent & trade mark advice is of the utmost importance. Taking the time to understand how intellectual property will create revenue for a business ensures it is truly an investment in the business and not simply a box to be ticked."

A trade mark is defined in section 17 of the Trade Marks Act 1995 as a “sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”

In this article we deal with the definition of a sign and what can be registered as a trade mark.  In my experience, businesses tend to underestimate the number of trade marks they actively use in their business.  They do this as they do not correctly identify the different types of trade marks they use and therefore miss the opportunity to register those trade marks.

Turning back to the definition of a trade mark, we can see that a trade mark is a sign that is used to distinguish goods and services.  To determine what the meaning of a sign is, the Trade Marks Act 1995 provides some guidance in section 6 that defines a sign as follows:

sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

Interestingly, the definition of a sign is not exhaustive meaning that the types of signs listed in the act are examples only.

Consumers and business are very familiar with standard trade marks such as words, slogans and logos.  These can be seen all around us on a day to day basis in every aspect of our lives from the time we wake up and have your first cup of tea (think Tetley, Lipton, Twinings) and during your drive to work (think Holden, Toyota, Mazda).  The most famous Australian trade marks are household names and we understand their significance inherently due to their long history of use.  Think of names such as Qantas, Vegemite, Arnott’s and R.M.Williams to name but a few.

Non-traditional trade marks such sound, movement, shape, colour and scent marks are much less common and certainly not as well understood by Australian businesses.

Some examples of non-traditional marks are:

AH MCCAIN YOU'VE DONE IT AGAIN

Registered sound trade mark 759707 for the Mccain jingle “AH MCCAIN YOU’VE DONE IT AGAIN”. (Click the image to listen to the clip)

Coca Cola Shape Trade Mark

Registered shape trade mark 1236812 for the Coca-Cola bottle shape

Louboutin red soled high-heel shoes

Registered colour trade mark 1352410 for Louboutin red soled high-heel shoes

Eucalyptus Radiata scent as applied to golf tees

Registered scent trade mark 1241420 for the Eucalyptus Radiata scent as applied to golf tees

While these trade marks are out of the ordinary and consumers may not even be aware that they are in fact trade marks, they create significant value for their owners.  They do this by providing their owners with a competitive advantage and in many cases allow their owners to charge a premium for their products.  Louboutin shoes for example have a retail price in the thousands of dollars and are instantly recognisable as a premium and expensive pair of shoes.

Non-traditional trade marks allow businesses to protect and register additional aspects of their brand.  As the cost of manufacturing continues to fall and the market becomes more crowded, being able to protect additional aspects of one’s products provides another avenue for differentiating your brand.

If you would like to know more about protecting your brands through traditional and non-traditional trade marks contact the team at Baxter IP for a complementary initial consultation to learn more.