Yes, it is certainly possible to register a sound or a scent as a trade mark. Under the Trade Marks Act of 1995 (Cth) all “signs” are registrable, provided they meet the threshold requirements under the Act. Per section 6 of the Act, a sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. Sound and scent marks are referred to as non-traditional sensory trade marks and are the toughest types of marks to register. Why? As with all trade marks, to become registered a scent or sound mark must be capable of distinguishing the applicant’s goods and/or services from those of other traders, and the mark must be capable of being represented graphically. In fact, per section 40 of the Trade Marks Act of 1995 (Cth), a mark must be rejected if it cannot be represented graphically. Thus the question arises, how do you represent a sound or a scent?

Representing sound and scent marks

The primary way in which sensory trade marks are represented is by verbal description. However, it may be possible to represent a sensory trade mark via the use of:

  • diagrams;
  • graphs;
  • mathematical curves;
  • symbols;
  • musical sounds/notes; or
  • a combination of the above.

Describing sound and scent mark

Along with a graphic representation of the trade mark, for a scent or sound trade mark to be registered, the applicant must supply a clear and conscience description of the mark.

The description of the mark must be sufficient enough, so that when viewed in conjunction with the graphic representation, all the elements that make up the trade mark are clearly defined.

The registrability of sound and scent marks

A scent or sound trade mark will not be capable of being registered if other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the trade mark (W & G Du Cros Appn (1993) 30 RPC 660 at 672).

Relevantly, a sound or scent trade mark will also not be capable of being registered if the sound or scent produced is functional in nature. In terms of sound marks, a sound will be regarded as being functional if it is caused by the normal operation of the item. Similarly, with respect to scent marks, a scent will be deemed to be functional if it is the natural scent of the product or is used to mask an unpleasant natural odour.

Ultimately, what will have to be show is that the scent or sound produced by the item in question is something quite apart from the goods themselves. The sound and/or scent must be capable of being used as a trade mark in it’s own right.

Conclusion

If you would like to know more about sensory trade marks, the likelihood of your mark proceeding to registration or simply want more information regarding the same. Why not contact our friendly team of LegalVision lawyers. We would be happy to assist you and answer any queries that you may have.

Vanja Simic

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