When looking to safeguard the elements of a brand, there is no greater protection than registering names, logos, and phrases as trade marks under the Trade Marks Act 1995 (Cth) (Act).
Acting as both a sword and a shield, a registered trade mark provides recourse against infringement, whilst preventing new conflicting marks from being registered. As brands fight for distinctiveness, new breeds of trade marks are created. The Act makes provision for the protection of more than just words and static images. Colour, movement and, scent marks are all eligible for registration pursuant to the Act. These marks provide unique benefits to a brand, particularly on digital platforms.
A colour mark is a powerful asset, giving the owner a monopoly over a particular shade, or combination of colour in relation to specific goods or services. Registering a colour mark is an incredibly difficult task. To be successful, one must provide extensive evidence of ‘use’ of that colour. The applicant must establish that the public identifies a specific trader’s goods or services with that colour. Cadbury chocolate are, perhaps, the most famous owner of a colour mark, having successfully registered their iconic shades of purple as a series mark.
Those seeking to trade mark a colour can expect strong opposition from competitors. Frucor Beverages (Frucor), the manufacturer of V Energy drink, is currently engaged in a lengthy legal battle with the Coca-Cola Company (Coca-Cola) in the Federal Court of Australia.1 Frucor is attempting to trade mark a shade of green (Pantone 376C) used on the packaging and marketing of V Energy drink. Coca-Cola are blocking the application, claiming that Pantone 376C is not sufficiently associated with V Energy drink to warrant the awarding of the colour mark. Frucor, in support of their case, tendered a survey of responses outlining what energy drink the public associate with Pantone 376C. The results were underwhelming, with less than half of the surveyed target consumers identifying Pantone 376C with V Energy drink. At present, Coca-Cola has been successful in their resistance to the colour mark. The Federal Court decision is still pending.
Coca-Cola’s persistent opposition demonstrates the value colour marks possess. Coca-Cola do not want their own products and marketing limited by Frucor holding a monopoly on Pantone 376C. In the rare circumstances where one may register a colour mark, it is an incredibly useful piece of intellectual property to fight for.
Scent marks are the rarest breed of all. Not only must an applicant prove that the scent distinguishes their goods or services from other trader’s, they must also provide a concise and accurate written description of the scent itself. Describing a movement is one thing, describing how something smells, a largely subjective observation, takes skill and care. The Australian trade mark register features only one scent trade mark, a range of golf tees carrying the scent of eucalyptus.
Although incredibly niche, a scent mark may be worth considering if a product carries a distinctive scent without a functional purpose. That scent may be the key point of distinction that sets that product apart from the others.
As print media wilts and digital thrives, animation and movement become synonymous with company branding. A logo trade mark may derive distinctiveness from its manner of movement or transformation.
Toyota are well-known for the action of a person gleefully jumping into the air, arms raised skyward, accompanied by the text ‘oh what a feeling’. A static image of a person jumping may not be as impactful as the full movement. From television advertisements to social media hashtag campaigns, ‘the jump’ has become synonymous with Toyota’s brand.
Movement should always be considered as a potential point of distinction from competitors. Movement marks carry no additional cost compared to a standard application. If the animated aspects of your branding help distinguish your goods or services, filing a movement mark may well be worth considering.
Colour, scent and movement marks are just a sampling of the wide variety of trade mark types. Whether you are looking to protect a word, logo, or the smell of eucalyptus, it is advisable to seek professional advice prior to making an application. As branding or rebranding is such a time consuming and costly process, ensuring all facets of your brand are protected should be the number one priority. If you intend to rebrand or are concerned about the level of protection for your current branding, please contact Iain Freeman.
