One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Types of Registered Trade Marks
A trade mark is an intellectual property right that protects a brand. There are various types of trade marks that are used in the market.
These are trade marks that are composed entirely of alphanumeric text. This type of mark, which is set in plain block print, normally offers the broadest protections. While this type of mark has its advantages in relation to the protection it can provide, it is also normally harder to register. The main reason for this is that the scope of the alphanumeric text functioning as a badge of origin is not limited by any stylisation or graphical elements (such as a logo, font type or colour).
Composite or logo trade marks
This type of trade mark is different from word marks in that they can combine a number of branding elements, such as words that are stylised in a particular font, placement, and appearance and they can also include a logo, number or other graphical elements. This type of mark provides a narrower scope of protection than a word mark Businesses file composite or logo marks as an additional layer of protection to a word mark, or instead of a word mark, if it is unlikely the word mark would be registrable
Series trade marks
This type of trade mark includes a collection of trade marks with essentially the same concept or ‘material particulars’. Trade marks belonging to the series only vary in nondistinctive aspects, such as non-distinctive words or representations that denote (1) goods or services used in relation to the trade mark classes or (2) are indicative of orders (first, second, etc.), number, location, price, color, and quality. Series trade marks usually offer the advantage of reduced cost of filing, because one application can encompass every mark in the series as opposed to filing each trade mark separately. Marks such as this set of M&Ms trade marks (AU TM# 706625, 706626 and 706627) are some of the more familiar examples.
Non-traditional trade marks
These trade marks do not contain visual devices and words. Thus, a thorough description and/or a video file (in the case of movement trade marks) of these trade marks should be submitted to the trade mark office in case a graphical representation is not applicable. By definition, any of these aspects should solely perform a distinguishing function to be accepted as a trade mark. One challenge in registering these kinds of trade marks is providing evidence that the aspect does not function in any way other than distinguishing in relation to goods or services as reflected in the application.
Sound trade mark
These may include music snippets, animal sounds, and other auditory impressions. Some of the most memorable sound trade marks include those of movie companies, such as MGM’s lion roar and the orchestral theme for 20th Century Fox (AU TM # 891830). Other notable examples of sound trade marks are Intel’s sound logo (AU TM # 1077876) and Yahoo’s yodel (AU TM # 827728).
Movement trade mark
Application for trade mark registration requires a video clip of the motion to be submitted to the trade marks office. Example: the act of putting salt onto meat as popularized by Nusret Gökçe, also known as SaltBae (AU TM # 1840549). Certain trade marks combine sound and movement, such as the HBO ‘This has been a presentation of HBO’ with TV screen snow static (AU TM # 1813005).
Trade dress refers to the packaging aspect trade mark, in which the identifiers are certain elements in the appearance of a product such that the consumer would not need a visible symbol or text for identification. These aspects must be both distinctive and non-functional. Several ubiquitous examples are the shape of a Coca Cola bottle (AU TM # 1055635), which has been in use by the company since 1916, the Burberry tartan plaid (AU TM # 708955), and the signature red bottom soles of high-heeled Louboutin shoes (AU TM # 1352410).
Colour trade mark
This may refer to a single colour, but the capability of a single colour to distinguish a certain good or service from others may be difficult to prove; thus, colour trade marks are usually combined with different aspects, or a combination of colors and designs are used. One example is 7-Eleven’s three horizontal bands of orange, green, and red (AU TM # 749403). Colour trade marks may also be associated with trade dress, such as in the case of Carmex (AU TM # 987048) and Tiffany’s & Co. (AU TM #1414010)
Scent trade mark
An important feature of scent trade marks is its purely distinguishing function. For example, a flower scent to mask the smell of rubbing alcohol cannot be a scent trade mark. The use of Eucalyptus radiata scent for golf equipment (AU TM# 1241420) and Play-doh scent (US TM # 5467089) are examples of registered scent trade marks.
In essence, it is extremely difficult for taste to serve as a trade mark because an impression of a product based on this aspect can only be experienced after purchase. At present, there are no registered taste trade marks in the Australian trade mark registry.
Trade mark type according to degree of distinctiveness
Generic “trade marks”
Generic “marks” are terms that denote an actual product. These marks cannot be registered and enforced because doing so will unfairly limit competition in the market. Thus, these types of trade marks should be avoided. In addition, extremely popular trade marks run the risk of becoming generic, which was the fate of marks like escalator, dry ice, and flip phone, among others.
Descriptive trade marks
Merely descriptive marks are marks formed from words that identify one or more characteristics of the goods and/or services the mark claims protection for. In general, this type of mark may not be registered as a trade mark because it does not indicate the origin of a product or service and thus cannot distinguish them from the competition. For example, the word “soft” in relation to pillows or cotton and the word “sharp” in relation to knives do not confer any registrability. Descriptive marks can only be registered if they acquire a secondary meaning, which happens through prolonged, extensive use in commerce and through widespread advertising. For example: “sharp” has acquired a second meaning in relation to sharp edged, flat screen televisions. Surnames are treated as merely descriptive, meaning that the same criteria for the acceptance of descriptive marks apply.
Suggestive trade marks
Suggestive marks are words or phrases that imply a feature of a product or service. Unlike merely descriptive marks, which directly refer or describe the goods/services, suggestive marks require a certain amount of imagination to arrive at, For example, the Coppertone brand suggests the outcome of using the line of suntanning products, and Citibank for financial services. One benefit of suggestive trade marks is that they give the consumers a clue regarding the nature of the product or service on offer. Suggestive marks can be inherently distinctive and can thus be protected by registration.
Arbitrary trade marks
Arbitrary marks are words or phrases that are used as a badge of origin for goods or services that are totally unrelated to its usual meaning. The classic example is the mark “Apple” for computers. Arbitrary marks are innately distinctive and strongly registrable.
Fanciful trade marks
Among all trade mark types, fanciful trade marks possess the highest degree of distinctiveness because these words are previously non-existent and are coined for the sole purpose of branding. Archaic terms that are used out of their original context can also be considered as fanciful marks. Owing to the lack of prior association consumers will strongly associate that word with the particular product or service; however, this means increased marketing allocation for educating the public about your brand and its products or services. Several classic examples of fanciful trade marks include Kodak, Xerox and Pepsi.
Special types of trade marks
In addition to these different categories, trade marks are also classified as follows according to their special functions.
Collective trade marks
Collective trade marks are registered and applied for by the members of a certain group. Read more…
Certification trade marks
To apply for a certification trade mark, the goods or service should comply with specific standards provided by a governing body.
Geographical indication trade marks
These trade marks may be classified under and are typically used in conjunction with certification trade marks.
Defensive trade marks
Defensive trade marks are one type of trade mark that cannot be subjected to a non-use dispute. Here’s why.
The considerations for choosing the best type of trade mark(s) to file for your brand may be involved but our trade mark attorneys can quickly point you in the best direction. If you require assistance in deciding what type of trade mark to file, please contact us on +61 2 9264 6716.