The world of trade marks has come a long way since Australian Trade Mark Registration No. 1 was filed back in 1906. This registration, which is still in force today, covers chemical substances in class 5 and is for the following “traditional” style logo mark incorporating the words “PEPS for COUGHS COLDS & BRONCHITIS” (as shown above).
Over one hundred years later, trade mark owners are increasingly seeking to register creative “non-traditional” trade marks such as shapes, colours, sounds and even scents. There are now hundreds of shape and colour trade mark registrations in Australia and, at the time of writing, 50 sound registrations and one scent registration. Examples of these types of marks include:
- Shape registrations for the shape of the TOBLERONE chocolate bar and the COCA COLA bottle;
- Colour registrations for PURPLE for Cadbury chocolate and RED for the sole of Christian LOUBOUTIN shoes;
- A sound mark registration in the name of McCain Foods (Aust) Pty Ltd for the words “AH McCAIN” followed by a “PING” sound and the words “YOU’VE DONE IT AGAIN”; and
- A scent mark registration for EUCALYPTUS RADIATA for golf tees in the name of E-Concierge Australia Pty Ltd.
As with traditional trade marks, non-traditional trade marks must be sufficiently distinctive in order to be accepted by the Trade Marks Office for registration. This means, for example, that it is likely to be difficult to register shapes that are common to the relevant trade and colours for which there is a competitive need. It may be possible to overcome an initial “distinctiveness” objection by filing evidence with the Trade Marks Office showing the nature and extent of the use of the relevant trade mark, however, evidence of advertising that simply features a particular shape or colour, for example, is unlikely to be sufficient. Evidence of advertising that draws attention to the shape or colour, on the other hand, may assist in demonstrating that a shape or colour has become distinctive in the market. The guidelines published by the Trade Marks Office indicate that statements such as “Look for the star shaped box” or “Unusual colours; exceptional goods” are the type of promotional terms that may assist.
Securing trade mark registrations for the brand names and logos used by a business will in most cases be of primary importance, however, applying to register distinctive “non-traditional” trade marks may provide valuable additional protection.