When asked what a ‘trade mark’ is, people traditionally think of words or perhaps a logo. But a trade mark can be so much more. It is the thing by which you are known. It is your identifying characteristic.
In New Zealand, you can achieve legal protection for many types of trade marks. You can protect brands, colours, headings, labels, letters, names, numerals, shapes, signatures, smells, sounds, tastes, tickets or words, or combination of these. It is a long list.
Despite the inclusivity of the list of potential trade marks in New Zealand, it can still be difficult to get legal protection for trade marks that deviate from the traditional word or logo.
But it is possible, as Griffin’s Foods Limited (Griffin’s) has recently proven.
Griffin’s has been baking New Zealand’s favourite biscuits for more than 150 years.
At the end of 2019, Griffin’s successfully registered as a trade mark the three-dimensional shape of its SQUIGGLES® biscuit. In early 2020, Griffin’s repeated the success with a trade mark registration for the three-dimensional shape of its MALLOWPUFFS® biscuit. Both of these registrations give trade mark protection to the physical shape and appearance of the biscuits.
Neither registration came easily. Both were achieved through providing evidence to the Intellectual Property Office of New Zealand that the way and extent to which Griffin’s has used the two biscuits in the market meant consumers had been taught to associate the biscuit shape with Griffin’s.
Non-traditional trade marks such as a biscuit shape are notoriously difficult to register. One of the biggest hurdles is usually showing unequivocally that it is the shape (or sound, smell, colour etc.) that consumers know to associate with the owner. And consumers have to associate the shape with the trade mark owner, not with any other trade mark, such as the name, that might be used in conjunction with the shape.
So, for Griffin’s to succeed, it had to establish that consumers associate the shape of each biscuit with the company Griffin’s, and not with its trade marks SQUIGGLES® and MALLOWPUFFS®.
This is difficult, but it can be achieved.
Tips for preparing to seek protection of non-traditional trade marks
Preparation is key. Take the time to research how your company has used its non-traditional trade marks. Advertise your product using the non-traditional trade mark by itself. Carry out independent market surveys. Talk to your trade mark adviser early in the process so they can help you devise a strategy to build that consumer knowledge.
As Griffin’s success goes to show, with proper planning, diligent work, and appropriate strategy, the seemingly impossible becomes possible.