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Trade marking smells, sounds, shapes and colours

Reported by Jacqui Pryor, Flying Solo
Tuesday, January 22, 2013
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It’s not just logos, business names and tag lines that you can trade mark. You can also register original fragrances, audio, shapes and shades.

In an earlier article I touched on what a trade mark is and what can be registered as a trade mark. Most commonly registered would be words/names, logos, images and slogans. You might be surprised to know that pretty much anything can be registered as a trade mark so long as it’s capable of distinguishing the nominated goods or services. Here is a selection of other ‘not-so-common’ things that you can register as a trade mark.

Smells

Scents or smells, believe it or not, can function as trade marks and be protected accordingly. As was discussed recently on the Flying Solo forums, there is only one trade mark in Australia that’s successfully registered as a scent trade mark to date. It’s called the Eucalyptus Radiata scent, and it’s registered in relation to the particular goods nominated, which are golf tees in this case. There have been many failed attempts to register a smell as a trade mark, and several are currently trying to gain registration.


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Sounds

Sounds are also protectable as trade marks. Sounds have proven a little more successful than smells, with a trade mark success rate of 50 per cent. There have been 86 applications filed for sounds and 43 are currently fully registered. Several are pending at the moment so time will tell if they are also successful.

Some well-known examples of sound trade marks include:

• “Ah McCain” followed by a “ping” sound, and then followed by the words “You’ve done it again”. This is a combined mark, being the combination of the words plus the ‘ping’ sound.

• Yahoo is also a famous combined mark, with the word Yahoo sung in a yodelling style.

Shapes

Shapes are definitely more commonly trade marked than smells or sounds, with more than 2400 applications filed over time, and more than 750 current registrations. Filing for a shape trade mark is sometimes a strategy of protection where design registration is either not viable or has expired. A number of the shape registrations are for packaging types, such as bottles and jars. As with all other trade marks, so long as the shape is capable of distinguishing the particular goods/services then it may be registered. A couple of examples that may be recognisable:

• Weber-Stephen Products owns a shape trade mark it describes as “the configuration of the three-dimensional shape of the kettle portion of the cooking apparatus, as illustrated in the representation attached to the application form. The kettle portion includes a bottom portion of generally semi-spherical shape and a top of generally semi-ellipsoid shape.” Yep, it’s the Weber barbeque! The company had to prove in this case that the shape had become capable of distinguishing their product at the time they filed their applications.

• Kraft Foods own a shape trade mark they describe as the “three-dimensional shape of the triangular packaging”, which they own in relation to chocolate confectionery. More commonly recognised as the triangular shape of a Toblerone package! They also own the shape of the actual chocolate that comes out of the Toblerone packaging. Kraft also had to prove that the shapes were capable (or would become capable) of distinguishing the goods from other people’s products.

Colours

I would argue that colours are amongst the most difficult to register. A total of 1064 applications have been filed for colour trade marks and only 260 show as current registrations. I believe this is because it’s less likely that a colour (especially a single colour) will be capable of distinguishing the goods/services of one trader from those of others. That is, it’s quite likely another person in the same industry would have a legitimate need to use the particular colour as well. In these cases you then have to prove – through evidence of your own use of the colour – that it does distinguish your goods/services. This can be quite difficult to do.

Composite marks (i.e. combining the colour with other elements such as words, images or even multiple colours) can often be easier to register, as it’s far less likely another trader will have legitimate needs to use that combination in business.

So there you have it; a trade mark doesn’t just cover your business name or logo, but many other things that may be a part of your business. If you do link a distinctive or unique smell, colour, shape or sound to your products and services you should consider registration as a trade mark to ensure you’re protected.

Have you or are you considering trade marking a smell, sound, shape or colour?

To comment on this article by Jacqui Pryor, head here.

01/11/2014 07:39Sydney, Australia. 1 November,2014
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