Non-traditional trade marks: changes to Trade Mark Examiner’s manual

IP Australia publishes and maintains a Trade Marks Examiner’s Manual. The Manual provides a detailed guide to the procedures and legal issues relevant to the examination and acceptance of trade marks in Australia. From time to time the Manual is updated and the most recent update includes a number of interesting comments regarding non-traditional trade marks.

Following the introduction of the new Trade Marks Act on 1 January 1996 IP Australia has formulated a more-or-less standard procedure for trade marks comprising shape, colour, sound or scent. The updated Examiner’s Manual takes non-traditional trade marks one step further by including procedures and guidelines for trade marks consisting of movement, taste and texture as well as holograms used as trade marks.

According to the Examiner’s Manual trade marks which consist of moving images, holograms (which change their character when viewed from different angles) and gestures are some of the more unusual signs for which applicants are requesting registration. In relation to each of these types of trade marks the applicant must provide clear representations which show all the features of the trade mark. The application must be accompanied by a description of the trade mark which likewise clearly describes all the features of the trade mark. A copy of the actual trade mark, as a video clip for example, must also be provided.

The description for either a movement trade mark or a hologram must be precise. An example of a suitable description for a movement trade mark might be as follows:

The trade mark is a movement mark. It consists of a yellow balloon with a face drawn on it which floats from the bottom left corner of the screen to the top right corner, while the facial expression changes over the course of the traverse from frowning to smiling. The trade mark appears in the video clip attached to the application.

The description for a hologram must clearly describe each view formed by the hologram when it is moved about. Representations of each view should also be provided. Similarly, if the applicant is claiming a gesture as a trade mark, a precise description of the gesture must be provided and appropriate representations to demonstrate the full scope of the gesture.

In some overseas jurisdictions, applications have been made for trade marks consisting of taste and of texture.

‘Texture’ falls into the definition of sign and it is thus possible that an applicant could be successful in an application for a texture as a trade mark. The usual tests apply as they do for any other kind of trade mark. The applicant needs to provide an appropriate representation and description, and the usual tests for capacity to distinguish also apply. In order to achieve registration, the texture would need to be something that was not common to the particular trade. The textures of linen, leather, silk or fur, for example, would not be capable of distinguishing within the clothing trade.

Taste trade marks have also been the subject of applications in the US, as well as within the European Community. While “taste” arguably falls within the definition of a sign, it is difficult – according to the Manual – to determine how a taste or flavour could serve to distinguish an applicant’s goods. It may often not be practical (or hygienic) for a customer to taste goods prior to selection and purchase. Tasting the goods after purchase does not seem to meet the requirements of denoting a trade source. It is also common for flavours to be used to mask an unpleasant taste, as, for example, cherry or strawberry flavouring for children’s pain relieving syrups and other medicines. The flavours in these cases have a functional purpose, and as noted previously for other kinds of non-traditional signs, are thus not adapted to distinguish. If an applicant was to apply for a taste trade mark, the application would require the same kind of description as is expected for scent trade marks. The taste would need to be described in words which make it clear exactly what the flavour is. It would also need to be clear from the description how the taste was to be used in respect of the goods claimed.

Whilst colour and shape trade marks are now commonly entered on the trade marks register in Australia, it is interesting to note that there are only 38 sound trade marks registered and no registrations for scent trade marks. In relation to “motion” trade marks the Trade Marks Office has demonstrated a willingness to allow registration of such trade marks subject to very precise descriptions of the moving features of the trade mark. The following examples of registered motion trade marks serve to illustrate the nature of the description required to achieve registration:

Example 2

Endorsements:

The trade mark is the portrayal of the red coloured character as it appears in the video clip attached to the application form. The two dimensional image of the character attached to the application form is a still of a scene from the video clip. The trade mark does not include words or sound.*

The image may be viewed at: http://pericles.ipaustralia.gov.au/epublish/ video/919012.mpg

Example 2

Endorsements:

The trade mark consists of a silent animated caricature of a talking human mouth; the trade mark is shown in the video clip which accompanies the application; the representations which are attached to the application are sequential freeze frames from the video clip.*

In relation to all these types of “new” trade marks one of the most difficult requirements for trade mark applicants is the need to demonstrate that the colour, or the shape, or the sound or the movement functions as a trade mark – that is, the sign functions to distinguish the applicant’s goods or services and that the public recognise the sign as a trade mark.