The Changing Face of Trade Marks

30 April 2007
The definition of ‘trade mark’ is broader than just words and logos. You could unwittingly be taking risks with your branding merely by changing your colour scheme. Brands are part of the arsenal used by businesses to give them a competitive edge. Make sure your branding works for your business and does not become a liability.

Words and logos are understood and recognised as the brand of a business.  These types of trade marks are known as conventional trade marks.  But gaining in popularity are nonconventional brands like shapes, colours, sounds, smells, slogans, tastes, and animation. 

To be registered, nonconventional trade marks must meet the same criteria as conventional trade marks.  They must be distinctive, function as a trade mark, and be represented graphically.  This criteria is often difficult to meet for conventional trade marks and can prove challenging for nonconventional trade marks. 

Shapes of a product are the domain of the patent or design systems.  But patents and designs have definite terms of protection.  Trade mark rights last forever provided they are periodically renewed.  The advantages of getting trade mark rights are obvious and many business owners are exploring extra protection for their product shapes as trade marks. 

If the shape of your product is not purely functional and through use is recognised by your customers as your product, then you may be able to register your shape.  The trick is to satisfy the Intellectual Property Office of New Zealand that it is the shape of your product that is associated with you and only you.  This can be difficult to prove and often will be case specific. 

In New Zealand there are about 300 registered shape trade marks covering a wide range of products. These registrations include the shape of distinctive soft drink, alcohol and perfume bottles, as well as the shape chocolate bars, snacks and even the shape of a vine tie.

Research has shown that colours, usually strong primary colours, are associated by customers with particular products and sometimes services.  This is why businesses like Cadbury, BP and many others register a particular colour for the goods or services they provide.  Anyone who is a buyer of chocolate will recognise the purple packaging of Cadbury chocolate without needing to see the name CADBURY or the specific product name to know the product is a Cadbury product.

Driving down the road and seeing a building painted in a vibrant red will immediately tell you that you are approaching a Warehouse store.
  
The sound of “Greensleeves” playing on a hot sunny day tells us a MR WHIPPY ice-cream van is not far away.  The sound of a thumb running down a plate lets us know that SUNLIGHT washing liquid is being used or advertised.  So strongly embedded in our consciousness are these sounds that we need no further information to make the link between provider of the product and the product itself.

A smell can also work as a trade mark, again, if customers would associate that smell with your products or services.  It is difficult to make this connection in certain industries like cosmetics and fragrances.  But in others adopting a distinct smell could be another way to distinguish you from your competitors.   The smell of beer for dart flights and the smell of freshly mowed grass have been registered as trade marks overseas.  No smell trade marks have been registered in New Zealand.  You could be the first.

Despite increased use in the marketplace, animation or motion trade marks are difficult to register, often because they are not recognised as trade marks.  In New Zealand we have four registered animation trade marks.  One example is an animated sequence registered by Yell Limited for a broad range of electric and electronic goods. The animation is made up of eight stills that flash one after the other depicting either a blank square or a square with a single letter to spell the word YELL.
 
Slogans are commonly used to market a business or its products yet slogans are often difficult to register as trade marks.  This is because they are seen as nothing more than a promotional tool.  But a slogan which is quite unrelated to the products or services it is used on can be registered as a trade mark.  Nike’s JUST DO IT is a case on point.

The changing face of trade marks provides challenges and opportunities for businesses. Adopting a nonconventional trade mark could provide another way to get an edge over your competitors.  As this is a new emerging area where boundaries change quickly, the key to success is to get advice early.

An edited version of this article was published in Her Business magazine May 2007

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