If you wish to trade mark the shape of goods, it is crucial to understand that IP Australia will likely be stringent in determining if the shape is registrable. For instance, packaging aspects or parts of a product may sometimes qualify for a trade mark. In any case, you must put your best foot forward when applying to register a trade mark for the shape of goods. This article will take you through four tips to consider before applying to register a trade mark for the shapes of goods.
1. Ensure it Meets the Requirements
Before registering a trade mark for the shapes of goods, it is essential to consider that it meets the requirements for registration. Similar to any other trade mark, this includes that your trade mark is capable of being distinguished from other traders.
In particular, your trade mark cannot already be in everyday use by others in your industry. This means that common shapes, such as a regular shoebox, are unlikely to meet the requirements for trade mark registration.
You should also conduct a trade mark search to see whether any identical or similar trade marks already exist. For Australian trade marks, you can do this by using IP Australia’s free trade mark search tool ATMOSS.
2. Check It is Not Functional
In addition to meeting the above requirements, you must also ensure that the shape of your goods is not functional. This is because if the shape of your goods is functional due to its direct relation to the nature or function of your goods, it may not be registrable.
Some key questions you should ask when deciding if your trade mark is functional include whether:
- other traders want to use this shape to offer their goods;
- this a typical shape for the product that I am selling;
- the shape of my good produce a particular result; and
- your product’s shape has an advantage in engineering, distributing, storing or producing the good.
If the answer to the above questions is ‘yes’, you may have difficulty registering a trade mark for it.
Continue reading this article below the form3. Provide an Accurate Representation
When applying to register a shape trade mark, you will provide additional descriptions and representations that show each feature of the trade mark sufficiently. Some essential tips to consider when representing the shape of goods include providing:
- an isometric drawing that shows all the features of the trade mark;
- a photo of the shape of your goods;
- a description of the trade mark and all relevant details (such as the measurements); and
- a written description of the trade mark.
4. Consider a Design Right
You might also wish to consider whether the shape of your goods will warrant registering a design right. A design right protects the overall visual appearance of new and distinctive products, granting you a maximum of ten years of protection. Design rights differ from trade mark protection in a few ways. First, while a trade mark identifies your brand and distinguishes your goods or services from those of other traders, a design right protects the visual appearance of your goods.
However, it is vital to remember that the threshold for registering a design right is higher than that of a trade mark. This is because a design must be new and distinctive to gain design rights. So, if your design has ever been publicly disclosed, you may be unable to register it.
Key Takeaways
IP Australia is firmer when deciding whether a shape trade mark is registrable. As such, you must put your best foot forward when applying to register a trade mark for the shape of goods. Some key tips for registering a trade mark for the shape of goods include:
- checking it is not functional;
- providing an accurate representation and description of your mark; and
- considering design rights.
However, it will be helpful to remember that your trade mark must first meet the legislative requirements for trade mark registration.
If you need assistance registering a trade mark for the shape of goods, our experienced trade mark lawyers can assist 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.
Frequently Asked Questions
You can register particular packaging aspects or even product parts as a trade mark. For example, some of the most commonly known shape trade marks include the triangular box shape of Toblerone chocolate or the shape of the Rubik’s Cube.
Some key tips for registering a trade mark for the shape of goods include ensuring that your trade mark meets the legislative requirements for trade mark registration. You should also ensure that your shape is not functional, as a functional shape will be difficult to register as a trade mark. Furthermore, you should provide an accurate representation and description of your mark and consider design rights in conjunction with trade mark registration.
We appreciate your feedback – your submission has been successfully received.
