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
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
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
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
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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