What Can You Trademark?

Logos and brand names aren’t the only forms of intellectual property (IP) that can be protected with a trade mark. This article sets out how to go about registering a trade mark for each of the main “non-conventional” categories of trade marks, those being certification trade marks, sounds, smells, shapes, movements or colours. As set out in the article in this series about getting a trademark, for all classes, the detailed steps of applying to register a trademark need to be followed.

Certification Trademark

A certification trademark is used to demonstrate that a good or service meets a certain certification standard.  Somewhat different from other trademarks, a certification trademark can be used by not only by an individual company but by several or a group of traders.

The normal process, with a few additional requirements, is followed when applying for a certification trademark. This extra step is the that a copy of the qualifying rules required for certification must also be provided at the time of or soon after the application has been lodged.

As a guide, certification rules should lay out what the method of determination is employed for certification, the bodies authorised to certify it, the processes for resolving uncertainty around the standards and what requirements the individual trader or owner of the trademark have to fulfil.

Sounds

A sound trademark is registered in relation to a sound that can be associated with or is made by a good or service. A recording sample of this sound must be included in the registration application.

Examples include the start-up sounds made by computers, advertising jingles or the unique pronunciation of a company name.

Smells

A scent trademark is used to protect a distinctive odour associated with a product or service. For instance, a perfumery may want to trademark a combination of fragrances. As with other trademarks, the product must be described concisely, but descriptively to be registerable.

Shapes

These trademarks serve to protect a certain shape that is unique or iconic to a good. A notable example of this is the Coca Cola Bottle. They must be three-dimensional in nature. Shapes that have practical use are more difficult to register than those that don’t have an apparent functional purpose. Neither can it be a replica of an existing shape such as a standard drinking mug.

It is also important to distinguish a shape trademark from a design right. A design right covers the unique design of a product which has not been publicly released, whereas a shape may already be on the market but not yet been trademarked.

Movements

A movement trademark entails particular motions which represent a service or item. A video file must be included in making a movement trademark application. These movements can be an animation, a dance sequence or other body movements.

Colour

Trademarking a colour is a harder process given how widely use most are, hence making them difficult to distinguish, generic and indeed associate with a brand. It is usually limited to marketing activities and packaging if granted

The threshold that needs to be met is whether the public can easily identify the colour the applicant is seeking to trademark with the brand.

As such, it is easier to register a trademark for a combination of separate colours, as the particular ordering could be more recognisable to the consumer.

Key Takeaways

The intellectual property regime in Australia is encompassing enough to cover nearly any imaginable recognisable feature that could be trademarked. However, this process is not always straightforward, and each category of non-conventional trademark has its own peculiarities. If you need specific advice relating to a particular type of trademark, contact one of our IP lawyers on 1300 544 755

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2017-02-13T09:04:53+00:00

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