In Australia, it is possible to seek trade mark protection for sounds or scents. However, there are specific criteria you must follow, as these types of trade marks are non-traditional. This article will describe the key processes involved in registering sounds or scents as trade marks.
General Principles for Trade Marks
A trade mark is a form of intellectual property (IP) protection that gives you exclusive rights to use your brand. Trade marks are registered through IP Australia. To register a trade mark, you must be able to represent the mark graphically through symbols. These symbols can be in the form of text or drawings, or a combination of both. The graphic representation requirement also applies to sounds and scent trade marks, making the registration process for these marks potentially complex.
Representing a Sound Mark
What is a Sound Mark?
A sound trade mark represents a distinctive sound associated with a particular brand, product, or service. Like traditional trade marks that protect visual signs, such as logos or words, sound trade marks aim to provide a unique and recognisable identifier for consumers.
Can I Register My Sound Mark?
Typically, to have a sound trade mark adequately represented, you will need to provide the examiner with an accurate description of the sound. It is also possible to represent the sound using a musical notation. If this is the case, it is crucial that your sheet music description is precise, clear and unambiguous. For instance, a good description could be, “This trade mark comprises a melody created by two instruments, namely the drums and saxophone, that overlap each other.” The more details you provide in the description, the less likely you will receive an objection from IP Australia.
A sound trade mark could also be represented using words or onomatopoeia, such as Zip, Whistle or Meow. For example, ‘the trade mark is made up of two cats meowing over the top of a chorus of people whistling’. This description is recorded on the trade mark register as supporting material, or an endorsement.
What Are the Key Considerations for Registering a Sound Mark?
There are four key elements to consider when registering your sound mark listed below.
- Distinctiveness: The sound must be unique and easily recognisable to distinguish your goods or services from others.
- Representation: You need to provide a clear and accurate representation of the sound. This could be in the form of a musical notation, a detailed description, or an audio recording.
- Identification: The sound must be capable of being represented graphically and identified.
- Use in Commerce: You must use or intend to use the sound commercially to identify and distinguish your goods or services.
An Example of a Registered Sound Mark
As of January 2024, there are currently under 69 registered sound marks. An example of this is the O’Brien sound mark registration. The endorsement for this mark is: ‘This is a sound mark. It consists of the vocal harmonisation of the letter ‘O’ followed by the word ‘O’BRIEN’ rendered as ‘O’, ‘O’, ‘O’, ‘O’BRIEN’, as recorded on the compact disc accompanying the application.’
Continue reading this article below the formRepresenting a Scent Trade Mark
What is a Scent Trade Mark?
A scent trade mark represents a distinctive smell linked to a particular brand, product, or service. It is less common than visual or auditory trade marks but can provide a unique and recognisable olfactory identifier for consumers.
Can I Register My Scent Mark?
Scent trade marks must be endorsed by a graphic representation, which is usually a description of the smell. This can be challenging because many smells are very difficult to represent graphically. Like with sound marks, the more precise the description of the scent, the more likely the trade mark examiner will accept it.
What are the key considerations for registering a scent mark?
The four key considerations for registering a scent trade mark are very similar to those for sound marks, being:
- distinctiveness;
- representation;.
- identification; and
- use in commerce.
An Example of a Registered Scent Mark
There are currently only two registered scent trade marks on IP Australia’s register. One of these scent trade marks is owned by E-Concierge. It applies to their eucalyptus-scented golf tees. The endorsement for this mark is as follows: ‘The mark consists of a Eucalyptus Radiata scent for the goods.’
Factors to Consider
Like with all trade marks, if other trades commonly use the sound or scent you want to register, it is unlikely to be a registerable trade mark. One such example of this may be a rubber scent for a tire company. This ‘common association’ rule also applies for particular types of products or services. For instance, a citrus smell for cleaning products may be too common of a a scent in the industry to achieve trade mark registration.
If you can prove that you have extensively used a smell or sound as a trade mark and it has become associated with your business, you may be able to overcome a “descriptiveness” objection. Such objections and acceptances of non-traditional trade marks can be influenced by case law and the specific details of each application. This makes overcoming objections more difficult to overcome with non-traditional trade marks. As such, you should consider working closely with a trade mark or IP specialist. These individuals are familiar with the specific requirements and practices of trade mark law in Australia. They can guide you through the application process, help with the necessary documentation, and address any challenges that may arise during the examination. Furthermore, consulting with a legal professional is helpful in building your understanding of the Australian trade mark system and increasing the chances of successful registration.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Growing your business involves effectively protecting the symbols, sounds, smells, and words associated with it. For sound and scent marks, however, this can be a complex process. To succeed in registering these types of marks, you should aim to submit a unique and comprehensive application. In particular, four key considerations to have are if your mark is:
- distinctive;
- clearly represented;
- graphically identifiable; and
- used in commerce.
To avoid having your application rejected, you may consider enlisting a trade mark specialist to get a better understanding of trade mark registration and protection.
If you would like assistance regarding scent or sound trade mark registration, contact our experienced trade mark lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
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