18th January 2017 - ADMIN

A trade mark is a sign that identifies a company’s brand to allow the trade mark owner to differentiate its products and services from those of its competitors. Section 17 of the Trade Marks Act 1995 (Cth) refers to the term “trade mark” as a “sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. Trademarks that are registered pursuant to the Act are known as “registered trade marks”.

The utility of a trade mark lies in the perception of consumers to use the sign to identify the origin or source of the goods and services. A trade mark demonstrates that goods or services originate from a particular source and not from a competitor in the industry. A trade mark also conveys information to the consumer about the characteristics or quality of the goods and services, to attract consumer interest in the goods or services with which it is associated.

A trademark can be in the form of your business name or logo, an image or slogan displayed on the company building, words or phrases used as an advertising tool, graphic elements of packaging, or the logo used as a brand sign in memos for business correspondence. Mostly, trademarks are used in the form of word marks, logo marks or slogans, but other non-visual representations can be “signs” aspects of packaging, colours, sounds or scents if the trade mark is capable of graphic representation for the process of registration of a sign.

Let’s explore the types of trademarks that businesses in Sydney can register through any qualified trade mark attorney or intellectual property law firm.

1. Word or Design Logo Trademark

You can use one or a mixture of words and graphic designs to help in the identification of your products and services so that you can attract attention to any products or services that bear those trade marks. In this sense, the trade mark serves not only as an indicator of the characteristics of the product or service but also as a beacon to attract the attention of consumers. Some famous examples of trade marks that do this include Adidas®, Nintendo®, and the NIKE SWOOSH® design in combination with the original NIKE®.

2. Certification Trademark

A certification trademark is used to certify the quality, accuracy or some other characteristics of the goods or services and including for goods, the material from which they are made and their mode of manufacture. Certification trade marks serve a different purpose to standard trade marks because rather than indicate who made or manufactured the goods, a certification trade mark indicates that the goods are certified as meeting a standard of quality or accuracy. For example, the ‘CE®’ trademark used in the European Economic Area (EEA) indicates the product follows safety standards, and the ‘Woolmark®’ mark shows the wool used in the production of the product is 100% pure.

The rules governing use of a certification trade mark must be assessed and approved by the Australian Competition and Consumer Commission (“ACCC’), before the trade mark can be accepted for registration.

3. Series of Trademarks

The Trade Marks Act 1995 (Cth) allows two or more forms of what is essentially the same trade mark to be covered by one registration provided that the difference between the trade marks should only differ from each on their non-distinctive components, in one of the following ways:

• statements or representations as to the goods or services in relation to which the trade marks are to be use;
• statements or representations as to number, price, quality or names of places;
• the colour of any part of the trade mark.

Multi-class series are also permissible.

4. Sensory Trademark – Sounds and Scents

Sounds or scents pertaining to specific products or services can also be protected as a trade mark provided they meet the same requirements as any other trade mark. They must be capable of distinguishing the goods or services of the trade mark owner from other goods and services. Section 40 of the Trade Marks Act 1995 (Cth) states that “an application for the registration of a trade mark must be rejected if the trade mark cannot be represented graphically”.

A sound trade mark can be anything that is auditory. For example, a musical notation is acceptable as a graphical representation of a sound mark consisting of a musical piece. The applicant must also supply recordings of the trade mark.

The following need to considered before applying for registration of a sensory trade mark:

• A graphical display of the mark along with the ‘words’ to explain sounds.
• A clean and incisive description of the mark which clearly defines all the details which constitute the trade mark.

For a scent trade mark, an actual sample is not required at filing but may be required during examination. The following need to considered before applying for registration of a scent trade mark:

• A graphical representation of the trade mark which could be through a verbal description.

Whether the scent is “common to trade” otherwise it will not be adapted to distinguish because consumers are unlikely to consider these scents as an indication of origin.

5. Shape Trademark

A special shape which is the whole or part of goods may serve as a trade mark. A shape for a trade mark can be defined as the shape of a product, the shape of the package or container used to ship the product, or simply a unique shape that makes your product stand apart from those of competitors. For example, the shape of Coca-Cola’s bottles was registered as a trademark, and the shape of a pencil and roofing vent are both trademarked shapes.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.