Brands and trade marks are valuable marketing tools for any business. Properly protected, trade marks are not only a business asset of value but when “registered” become a very effective tool against copy cat competitors.

Registered trademarks are a government granted right which provides the owner with an exclusive right to that brand Australia-wide, for the type of business activities it is registered for.  The most common types of trade marks which spring to mind are word marks (eg Coca Cola) or logo marks (McDonald’s “Golden Arches”). So if you haven’t already, it’s worth conducting an audit of your business’ brands - identifying them, then getting a strategy in place to register them.

In recent times and due in part no doubt to clever marketing campaigns, shape marks have gained some prominence in the area of trade marks law. The Trade Marks Office and the Courts have been recognising that the shapes of products can, in certain circumstances, function as trade marks. Put another way they recognise that consumers in this marketing-centric day and age not only associate a business by its various word/logo marks but can also make this association by the distinctive shape of a business’ products. From example the shape of the Coca Cola bottle is a registered trade mark (but does include the word mark as well), as is the rounded triangular button on Aristocrat poker machines. However this recognition by the Trade Marks Office and the Courts is not given lightly.

This was shown in a recent 2009 Federal Court decision, Chocolaterie Guylian N.V. v Registrar of Trade Marks. In this case, the well known chocolate manufacturer, Guylian was unsuccessful in its attempts to get the shape of its sea horse shaped confectionary registered as a trade mark. Its application for registration was initially knocked back at the Trade Marks Office examination stage and then at a Hearing. Guylian then subsequently appealed the Trade Marks Office Hearing decision to the Federal Court.  Justice Sundberg considered whether the evidence put forward by Guylian demonstrated that consumers recognised the shape to be a trade mark belonging to Guylian - that is a “badge of origin”. Despite extensive evidence of marketing and consumer survey evidence, Justice Sundberg still considered that:

• the sea horse shape was a shape of ordinary significance that other confectionary manufacturers might wish to use;
• the trade mark significance of the sea horse shape was diluted due to the presence of other surrounding Guylian trade marks; and
• the survey evidence of consumers whilst showing significant consumer recognition, did not show that consumers recognise Guylian as the source, by reference to the shape alone functioning as a trade mark.

A more detailed commentary will be made on this decision in the Articles Section of this website. But the key points to take away from this decision and other related shape mark decisions are that:

• to be capable of registration, the shape of a product, must be shown to be used as a brand/trade mark;
• shapes which other business are likely to want to use in relation to shape of their own products, will not be registrable without appropriate evidence of consumer recognition - if the shape is simply ordinary and common place, it is not, without evidence, likely to be registrable;
• the less the shape of a product contributes to the functionality of the product, the more likely it will be registrable;
• where evidence of consumer recognition is needed to show that the shape functions as a trade mark, the evidence must show that the consumer recognises the business as being the source of that product by reference to the shape alone; and
• the significance of product shapes functioning as a trade mark may be diluted where they are marketed in close proximity with surrounding word/logo marks.

Business IP Tips

• The more unique or distinctive the shape of your product, the more likely it will be registrable. Factor this in when designing your product at the outset.
• If practical, look to market the unique shape of your product clearly at the point of sale (eg through clear packaging) and where possible market the accompanying word/logo marks in a way which stands alone from the shape.
• Make sure your marketing strategy is in sync with your trade mark strategy from the outset.
• Consider also protecting the shape of your products through design registration.

- Colin Cheung

Read about Actuate IP’s trade mark registration and design registration services.