As unbelievable as it may sound, we must all get ready for a
'new generation' of trade marks including movement,
hologram, taste and texture marks. Earlier this year the Trade
Marks Office issued an official notice about a change in practice
in respect of non-traditional marks.
The Trade Marks Register is already home to many non-traditional
marks including shape, sound, colour and scent marks. Some examples
of these marks include Lindt's gold chocolate Easter Bunnies,
Tiffany's blue packaging, Jean Paul Gaultier's perfume
bottles and the sound of the "PING" in the "Ah
McCain You've Done It Again" advertising campaign.
More recently, moving images such as the Nokia handshake on
mobile phones, the M&M characters in animation and an animated
sequence mark by Microsoft have also been registered as moving
trade marks in Australia.
Some of the new types of trade marks are discussed below.
Applicants who apply for moving trade marks still need to
satisfy all the usual elements required to obtain trade mark
protection. They are required to submit clear representations of
the trade mark together with a detailed description of it, showing
and describing all of the mark's features. A copy of the actual
trade mark (for example, a DVD or video) must also be submitted to
the Trade Marks Office. The moving trade marks can be viewed on the
Trade Marks Register.
Hologram marks are also new. Examples of hologram marks include
the Glaxo Group's trade mark registrations for the holograms
that appear on their packaging of goods such as toothpaste, dental
floss and mouth wash.
Applicants who apply for hologram marks will, in addition to
satisfying the usual elements required for trade marks, need to
describe each view formed on the hologram when it is moved about.
Representations of each view will also need to be submitted to the
Trade Marks Office when applying for the mark.
It may also be possible to successfully apply for a texture as a
trade mark. In addition to satisfying the usual criteria, the
applicant for the texture mark will need to provide an appropriate
representation and description of the texture. To be successful,
the texture would need to be something that was not common to the
particular trade. For example, textures such as linen, leather,
silk or lace would not be capable of distinguishing the mark within
the clothing trade.
There are currently no trade mark registrations for taste in
Australia. However, taste trade marks have been the subject of
applications in the United States and the European Community. The
Australian Trade Marks Office has observed that it is very
difficult to determine how a taste or flavour could serve to
distinguish the applicant's goods, though "taste"
does appear to fall within the definition of a sign under the Trade
Applicants who apply for taste trade marks need to clearly
describe the flavour. It will also need to be clear from the
description how the taste is to be used in respect of the goods
It is very difficult to acquire a trade mark for taste.
Children's pain relieving syrups and other medicines that have
cherry or strawberry flavouring for example, are not adapted to
distinguish the taste because the flavours have a functional
In the US, a trade mark application for the taste of an orange
flavoured antidepressant medication was rejected on functional
grounds. The Trade Marks and Designs Registration Office in the
European Union also rejected a pharmaceutical company's attempt
to register the taste of artificial strawberries.
With the current increase of applications for non-traditional
signs, it is important to assess your brand to determine whether
you can obtain trade mark protection for marks that you may not
have considered previously.
Alexia Marinos of Gadens Lawyers is a Registered Trade Marks
Attorney and can provide you with advice on trade mark registration
in Australia and overseas.
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