The introduction of the Trade Marks Act 1995 (Cth) saw the broadening of the legal definition of ‘trade mark’. Per section 17 of the Act, a trade mark is any sign that is used in the course of trade for the purpose of distinguishing one trader’s goods and/or services from those of others. Section 6 of the Act states that a sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. Two points to take away from the legal definition of ‘sign’ are:

  1. The definition is non-exclusive and it is possible for other matter to be registrable as a trade mark; and
  2. Shapes, being three dimensional objects, fall squarely within the ambit of registrable matter.

Shape trade marks are regarded as non-traditional marks to which specific registrability criteria attach.

Representation and Description

Before a shape trade mark will be accepted for registration, it is a prerequisite that the mark be both represented graphically and contain a concise and accurate description of its content/features. Providing both a graphical representation and an adequate description is key because it will permit for the proper examination of the mark. If the trade mark cannot be properly assessed by a trade marks examiner, it will not proceed to registration.

Capable of distinguishing

As with other trade marks, a shape will be registrable if and only if the shape in question is capable of distinguishing one trader’s goods and/or services from those of others and if the shape is not one which is likely to be needed by other traders in the ordinary course of their business.

Commonality and functionality

Common shapes are more likely to be rejected as there is a higher probability that other traders will need to use the shape for their own goods. Similarly, shapes that possess significant functional features may also be objected to on the same basis. In determining whether a shape is functional, it is necessary to consider:

  • whether the shape is an essential feature of the article;
  • whether the shape is needed to achieve a particular technical result;
  • whether the shape provides an engineering advantage such as superior performance; and
  • whether the shape is readily and cheaply manufacturable.

Shape trade marks which are merely aesthetically pleasing cannot be objected to on the basis that other traders may want to use the shape.

Invented shapes

Invented shapes are prima facie registrable. However, whether a shape is truly inventive is a question of fact, which warrants a subjective case-by-case assessment. For a shape trade mark to be inventive it does not need to be entirely new, difference or innovative. It will be sufficient if the shape has been clothed in a getup that makes it sufficiently unusual. Having said that, slight variations of common shapes will rarely be registrable.

Evidence of use

If an application to register a shape trade mark has been raised, it may be possible to overcome by tendering evidence of use. For the evidence to overcome the objection, it must establish that the shape has been promoted as something quite distinct from the product itself. Consumer surveys, declarations of other traders and declarations from customers, may be submitted and particularly helpful in such instances.

Conclusion

If you would like to know more about the registrability of shape trade marks, relevant considerations regarding the same or the likelihood of your trade mark being accepted, why not call our friendly team of LegalVision lawyers to see how we can help. We would be happy to assist and answer any queries that you may have.

Vanja Simic

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