It is very common for businesses to register a trade mark for their brand names or logos. However, there are some unique types of trade marks that can provide brand protection for those who need it. This article goes through four little known types of trade marks and explains some of the key things that you will need to consider if you want to register one.

Mascot Name

During the Gold Coast Commonwealth Games in 2018, ‘Borobi’ was the name chosen for the blue koala mascot. In Australia, a trade mark must be examined by IP Australia. Here, they consider whether sectors of the community could consider the mark offensive or scandalous. The word ‘borobi’ originates from the Yugambeh Aboriginal language and translates to ‘koala’ in English.

In response to the Commonwealth Games’ trade mark application for ‘Borobi’, the cultural heritage body for the Gold Coast, Jabree, opposed the application. Jabree argued that using the word commercially needed to be approved by the Yugambeh people. Without such consent, Jabree argued that the use of the word would be considered cultural misappropriation. Further, they argued that it would infer an affiliation with the Yugambeh people.

Jabree was unsuccessful in this case. The court found that as they were not the affected party and therefore did not have grounds to oppose the use of ‘Borobi’. The court also found that the way that the Commonwealth Games was using ‘Borobi’ was not scandalous. They also decided that it would not infer an affiliation with the Yugambeh people. Further, the Commonwealth Games had already consulted with members of the Aboriginal community.

Therefore, if you are looking to trade mark a mascot name, you will need to ensure that it is not offensive to the community at large. Also, you must make sure that you are not engaging in misleading or deceptive conduct by falsely inferring that you are affiliated with a certain brand or group.

Slogans

Much like your logo or brand name, one of the types of trade marks that you can register is your business’ slogan or catchphrase. However, this can be a difficult process to undertake.

Unique campaign slogans can be registered as a trade mark if they distinguish your business’ goods and services from that of another business. Some famous examples of slogans that have been successfully registered as a trade mark include:

  • McDonald’s ‘I’m lovin’ it’;
  • Nestle’s ‘Have a break, have a KitKat’;
  • Nike’s ‘Just do it’; and
  • L’Oreal’s ‘Because you’re worth it’.

However, your campaign slogan cannot be registered if it is:

  • too similar to someone else’s registered slogan and subsequently infringes their trade mark rights;
  • incapable of being distinguished from other traders by being too descriptive;
  • offensive;
  • misleading to the consumer; or
  • merely expressing praise (i.e. the best Fish and Chips in Sydney) as this would unfairly disadvantage other businesses.

Colour

According to IP Australia, to register a colour as a trade mark, you must establish that the:

  • public identifies that colour as synonymous with the goods or service of your business;
  • colour alone is capable of distinguishing the goods of your business from other traders; and
  • colour is the trade mark and not merely part of the goods or packaging.

The case of Cadbury and the colour purple, as well as Veuve Cliquot champagne and the colour yellow, are two of the rare instances where colour trade marks have been successful. Cadbury was only able to obtain the trade mark for the colour purple due to their extensive use of the colour for over 100 years. As a registered trade mark, Cadbury can prevent competitors using the same shade or a confusingly similar shade for another confectionary product.

However, obtaining a colour trade mark is a very difficult process. IP Australia has rejected colour trade mark applications for many established businesses, including:

  • Telstra and the colour yellow;
  • BP and the colour green; and
  • Coca-Cola and the colour red.

Scent

In Australia, there is a high threshold for registering a scent as a trade mark. A scent can only be registered if it is:

  • unusual;
  • distinctive; and
  • associated with a particular good or service.

An example of a successfully protected scent is the scent of eucalyptus applied to golf tees.

To register a scent for a trade mark, you must be able to concisely represent the scent in written form on how you will apply that scent to your products. The precision required for defining a scent trade mark is extremely high. Consequently, there are not many scents that have been afforded trade mark protection in Australia.

Key Takeaways

You may be interested in registering one of the unique types of trade marks discussed in this article. If so, you must ensure that your mark satisfies the legal requirements and does not infringe on anyone else’s trade mark rights. Your trade mark must be unique to your industry and cannot be likely to offend certain communities. If you need assistance registering your trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Jessica Coventry
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