If you want to stand out in a crowded market, you need a trade mark that uniquely identifies your brand to consumers. Ensuring protection for your food and beverage trade marks is especially important for new brands. It is also vital for established brands to continue to review and protect their trade marks.
Filing for and registering marks protects one of the most valuable elements of your business and reduces the chances of others copying your brand for the same goods/services. Doing this prior to launch protects your trade mark early and provides you with a level of comfort with at least one aspect of the launch of your brand.
Trade mark searches and market checks should be done early for emerging brands to ensure the name you want to use is clear for use and no prior registered trade mark rights or common law rights may impact your plans.
Choosing a distinctive mark and avoiding any descriptive terms is essential. Laudatory marks will also be difficult to own as a trade mark. For example, marks such as “Dark Chocolate” (for chocolate) or “Unbelievable” will be difficult and expensive to register. A distinctive mark is much easier to register and to defend.
Also, consider whether your mark is incorporating a geographical indicator (GI) and whether you can use the name. We will cover this in more detail in a future article but keep in mind a GI means there are restrictions on how and when you can use certain names. Examples of some well-known GIs are Tequila (Mexico), Darjeeling (India), and Stilton (UK).
The importance of trade mark protection should not be underestimated over the entire brand lifecycle. Established brands should also continue to be monitored to ensure your trade mark portfolio is up to date and defensive protection is considered where required.
What to consider when deciding the best way to protect your trade mark
Most trade mark offices around the world use the Nice classification system of goods and services. There are 45 classes in total in this system with goods in classes 1 to 34 and services in classes 35 to 45.
The specific goods and services that you seek protection for clarify the boundaries of your trade mark. It also allows same or similar marks to coexist for unrelated goods or services. For example, the word mark LION is registered by different owners for various goods and services including by Anchor Foods covering chocolate and confectionery and related products, by Lion – Beer Spirits & Wine Pty Ltd for beers and by Lion Capital for financial affairs.
2. The Different Kinds of Trade Marks
You can register various formats for trade marks and whilst word, slogan and logo marks are the most common, other trade mark options include:
- sound trade marks – the tagline “Ah McCain, you’ve done it again (ping)” is a registered trade mark for various frozen food products;
- movement trade marks – Mars Australia own a registration for a moving M&M character;
- shape trade marks – Soremartec own a registration for the Raffaello confectionery in a wrapper;
- colour trade marks – H J Heinz own a registration for the teal colour that is used in relation to their baked bean products; and
- scent trade marks – there are only two registered scent marks for eucalyptus for golf tees and cinnamon for non wood-based furniture.
The following provides you with further information on word, logo and slogan marks.
A plain word mark provides you with the broadest protection, meaning you can use your mark in any font, colour, size, etc. and may provide some coverage for logo versions of your mark.
Some examples of well-known marks that are protected via a registration for the word mark include MILO, VICTORIA BITTER, SNICKERS, DEVONDALE, MCDONALD’S, SUBWAY, Four Pillars, MASTERFOODS, WHITE WINGS, DAIRY FARMERS.
Use of your mark should always be consistent with its registration in order to avoid any potential challenges.
Slogan trade marks
Slogans are like mottos and can encapsulate your business ideals and values. A good slogan draws attention to your business without being descriptive.
For food businesses in particular, successful slogans can create an unforgettable memory for customers linked directly to your brand, increasing brand awareness and recognition.
It is also an excellent way to foster enhanced relationships and loyalty with your customers. Some of the best-known slogans include:
- JUST LIKE A CHOCOLATE MILKSHAKE ONLY CRUNCHY (Coco Pops) – Kellogg Company;
- GLASS AND A HALF – Cadbury;
- IT’S FINGER LICKIN’ GOOD – KFC
- I’M LOVIN’ IT – McDonald’s
- TASTE THE RAINBOW (Skittles) and ANY EXCUSE FOR A CELEBRATION (Celebrations) – Mars Australia;
- WEAR THE DOLMIO GRIN – Mars Australia;
- HAVE A BREAK, HAVE A KIT KAT – Nestlé.
Slogans should not be laudatory, descriptive and cannot be misleading. A prime example of a misleading tagline is the “Red Bull gives you wings” slogan. In 2014, a consumer in the US launched legal action claiming that drinking Red Bull had failed to give them enhanced performance or concentration and therefore the advertising and marketing was deceptive and fraudulent, rather than mere puffery. Red Bull eventually agreeing to a US$13 million settlement.
Slogans should be chosen wisely, ensuring they are distinctive and catchy but also not misleading consumers as to the performance or qualities of your goods or services.
Distinctive logos should always be registered to protect the visual elements of your mark. Examples of registered logo marks include:
3. Different types of trade marks
There are also additional types of trade marks that can provide protection for specific marks and if they are used by an association or to certify a characteristic of goods and/or services.
Collective marks are intended to be used by members of an association for the goods/services they provide. A collective mark can differentiate a product from other traders either by the geographical source, quality, or the method of manufacture of the goods/services.
Some examples include:
When collective marks are used they indicate the manufacturer is a member of the association and their goods/services meet the trade mark requirements for use.
Certification marks certify the quality, accuracy or other characteristic of the goods and/or services. Specific explicit rules must be met for successful applications of certification marks. IP Australia and the ACCC assess the mark prior to registration.
Only those authorised can use the mark, in line with the rules and requirements of the certification mark published by IP Australia.
Examples of certification marks include:
4. Defensive marks – broader protection for a well-known trade mark
Defensive registrations provide protection for well-known trade marks outside the usual scope of their goods and/or services. This protection for broader goods and/or services may prevent another party from registering the same or similar mark, reducing the chance of consumer confusion or a misleading connection to the original mark.
To file a defensive application, the trade mark owner must own a registration for the usual goods and/or services on which the mark is used. For example, prior to filing defensive applications, COCA COLA would need to be registered for beverages, JACK DANIEL’S would need to be registered for whiskey.
Some examples of defensive marks are as follows:
Generally, the owner of the defensive trade mark has no intention of using the trade mark for the extended goods and/or services. Therefore, defensive trade marks cannot be removed on the basis of a non-use removal action.
Trade marks are important business assets and they reflect your business ethos and strategy and should be protected via trade mark applications where possible. Registering your marks is the best insurance policy you can have for the future of your brand.
Taking the time to carefully consider all aspects of your brand and what needs to be protected is vital. Clearing marks for use prior to launch and filing early ensures maximum protection.
In addition, once your mark is registered it is wise to continue to monitor and ensure your protections are updated and to consider defensive applications where required.
Should you require advice on how best to protect your marks or if you have any questions on the above, please feel free to contact a member of the Baxter IP team.