Trademark Definition
Your trademark may be your most valuable business asset!
Frequently referred to as a ‘badge of origin’, a trademark is a distinctive sign - usually a word or a symbol - that distinguishes your goods and services in the marketplace and helps consumers to identify them.
Usually a trademark is an image or word(s), but not always. By definition a trademark may include words, numbers, colours, logos, shapes, sounds, scents or any combination of these.
A trademark is a type of intellectual property, which identifies the origin of a business’s products or services. When a trademark is registered, the state gives the trademark owner the exclusive right to use that trademark for its products and services.
Legal trademark definition
In Australia, Section 17 of the Trade Marks Act defines a trade mark as follows:
“What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”
Why do you need a trademark?
The word ‘brand’ derives from the act of burning a mark onto a surface with a hot iron. In farming practice, livestock were traditionally branded with the owner’s identifying mark so that they could be distinguished from the stock belonging to other farmers in a marketplace. Over time, branding has become a powerful marketing tool used by brand owners to distinguish their products or services from their competitors’. Do you prefer Colgate toothpaste or Oral-B? Cadbury, or Toblerone chocolate? What brands do you prefer for mobile phone services, sportswear, computer hardware, ballpoint pens or sunglasses? Why do you prefer them?
One of the advantages of a strong brand is that your customers can easily identify your products and, over time, they come to know the qualities and characteristics associated with your brand. By registering your trademark, you can protect your brand from competitors or copy-cats who might adopt a confusingly similar brand in the hope that customers will think that their products are yours.
Trademarks can be registered or unregistered
Over time, a company who has not registered their trademark may develop “unregistered trademark rights” through their consistent use of that mark over a period of time. Once you’ve built up a sufficient reputation, you may be able to prevent competitors from using confusingly similar trademarks to the detriment of your business, under fair trading laws or passing off. However, that’s a lot of things you have to prove to get someone to stop using a similar trademark to yours! Having a registered trademark is the best way to ensure that you have the exclusive right to use your mark - which gets backdated to the date you applied for it.
When you own a registered trademark, you can avoid having to prove any reputation based on longstanding to build a case for trademark infringement. It is much easier to defend your brand and take legal action against anyone who uses a similar mark. Your registered trademark is presumed valid and your rights are enforceable.
A trademark registration only provides legal protection in the country in which it is registered. You need to register a trademark with the Trademark Office in each country where you intend to use it.
You can identify an unregistered trademark in your marketing collateral by using the superscript TM symbol: ™. You may only use the superscript R symbol inside a circle, ®, if your trademark has been registered by the intellectual property office of the territory where you’re using it. There are instances where it may be preferable to use ™ rather than ®.
Read more about when to use the registered trademark symbol ® and when to use ™.
What types of trademarks are included in the definition of a trademark?
Generally, trademarks are names, taglines or a logo, but other types of trademarks are also permitted and can be registered as trademarks. The Trademark Office allows distinguishing brand signs such as 3D shapes, aspects of packaging, signatures, scents, sounds (including jingles), tastes, colours or colour combinations, labels, letters, headings, numbers or movements (e.g. animations). It’s virtually any distinguishing feature that allows your brand to stand out in the marketplace.
1. Word or name trademarks
A word mark can be used to protect a business name, a product name or a tagline or phrase. A trademark registration for a word mark provides protection for the word(s) themselves, whether they are used in any font, size, colour or with a design element. This can be a most formidable business asset. Consider how we instantly recognise some of the world’s most famous brands and the different things they immediately call to mind, such as AMAZON, MERCEDES-BENZ, VODAFONE, BP.
One company can register different word marks to identify different products and services owned by that company.
For example, the trademarks for AERO, NESCAFÉ, KIT-KAT, NESTEA are among many trademarks owned by Nestlé.
2. Slogans
Many businesses also register trademarks for their slogans, which have become identifying features of their brand.
For example, you probably know some of these slogans:
WOOLIES – THE FRESH FOOD PEOPLE
L’OREAL – BECAUSE YOU’RE WORTH IT
KIT-KAT – HAVE A BREAK, HAVE A KIT-KAT
2. Logos or images
A device mark is a logo or image that acts as a symbol identifying your products or services - think Apple’s image of an apple with a bite mark taken out of it or Qantas airline’s winged kangaroo.
While a trademark registration for a word mark protects a name no matter what font, size or variation is used, a registration for a logo, image or stylised mark protects the specific visual elements of a specific trademark - the look of the mark.The visual symbols or devices of well-known brands are known to most of us, such as:
3. Combined marks - combinations of words and images
The trademark definition allows for a combination of words and images to be registered as a trademark. Unlike a word mark registration which protects the word element on a trademark, a combined mark offers protection for the visual aspects of a mark. They do not offer the same level of protection of the word(s) contained within the combined mark in the same way as a word mark does.
If your trademark contains words which are descriptive or generic and therefore you can’t register a trademark for them, you can register a combined trademark. This may help to protect your word mark or similar words being used by other traders. Likewise, if you wish to protect the design elements of your trademark, then you should register a combined trademark.
Each type of trademark offers its own set of benefits and so for the most comprehensive protection, you should try to register your word mark in plain text and the visual logo as a separate trademark.
Characters or brand mascots
Some companies have successfully used cartoon characters as figures or even heroes that represent their company brand.
Technically, these are also symbols or devices that represent a brand.
The Kellogg Company in Australia has registered trademarks for the character images of Snap, Crackle and Pop as well as word marks for SNAP and POP.
Ronald Macdonald is another famous brand icon. This cartoon character is also registered as a trademark in Australia and other countries around the globe.
Colour trademarks
Very few colour trademarks have been registered around the world. This type of trademark is difficult to obtain as an applicant must be able to show convincing evidence that the longstanding use of a specific colour (or colour combination) has led consumers to identify that colour (or combination of colours) with their brand.
Examples:
Tiffany & Co, a multinational jewellery business, has a trademark registration for the robins-egg blue colour in Australia and other countries. It was first used in 1837 as the colour of the cover of their Blue Book – the annual catalogue of Tiffany’s collection of handcrafted jewels. The trademark consists of the colour BLUE with RGB Profile R117 G210 B204. The company’s trademarked packaging, the Tiffany Blue Box® is this shade of blue. The trademark consists of both the words TIFFANY & CO and a robin's egg blue box.
Another example of a successful colour trademark registration in Australia is Cadbury’s purple.
In 2006, Cadbury was awarded trademark registrations for the purple colour it uses for “milk chocolate in bar and tablet form, milk chocolate for eating, drinking chocolate, and preparations for making drinking chocolate.” In some countries, where Cadbury has registered this trademark, the company has faced trademark lawsuits, in which they were challenged by their competitors over the exclusive use of this colour.
Mars Australia also has a purple colour trademark for the the colour used on their WHISKAS catfood packaging and endorsements for the colours PURPLE, SILVER, YELLOW and WHITE as elements of its trademarks for foodstuffs for animals.
BP also has an Australian trademark registration covering the colour combination of green, yellow and white applied to the exterior of a petrol station.
Comparatively few colour trademarks have been registered in other countries. In the USA, Owens-Corning became the first company to register a trademark for their unique shade of pink insulation in 1985.
In 1988, UPS trademarked its “Pullman Brown” colour of its delivery vans. Deutsche Telekom AG has a colour trademark for its magenta, 3M trademarked its canary yellow colour for Post-it notes, and Fiskars owns a registered trademark for orange scissor handles.
Trademarked shapes and ‘aspects of packaging’
A registration for a shape trade mark protects a three dimensional shape which distinguishes one brand’s goods or services from those of other traders. In Australia, there are a number of registered shape trade marks covering items such as bottles, chocolates, toothbrushes, pens and other packaging.
Toblerone’s triangle packaging for chocolate products
The shape of the Coca-Cola bottle
The shape of the Toilet Duck bottle
Lindt’s teddy bear and bunny packaging for chocolate products
Scent and sound trademarks
These are probably the most rare trademarks. The reason they’re difficult to obtain is that the owner has to prove that the scent or sound is sufficiently distinctive and unique such that it identifies their products or services. This can be a high bar to overcome and usually involves filing evidence proving that the scent or sound acts as a trademark and is recognised as such by a significant section of the purchasing public.
Examples from Australia of trademark registrations for sound trademarks include the following:
Vegemite has a registered trademark for their ‘Happy Little Vegemites’ tune
O’Brien’s jingle rendered as 'O', 'O', 'O', 'O'BRIEN' is trademarked
Boost Juice has a sound trademark, B-OO-OO-S-T shouted out!
Intel has a trademark for their 5 note audio progression of D Flat, D Flat, G Flat, D Flat and A Flat.
A scent trademark was first recognised in the USA in 1990 when the US Patent and Trademark Office granted a trademark registration for the floral fragrance applied to a brand of sewing thread. The Eucalyptus Radiata scent applied to golf tees was the first scent trademarked in Australia, a full 14 years after the Trade Marks Act allowed for scents to be registered. There are just two Australian trademark registrations for scent marks - the most recent one covering the scent of cinnamon applied to non-wooden furniture.
The United States seems to have the most registrations in this quirky category of trademarks. Two brands have registered the scents that they use in their stores as trademarks, to distinguish them from those of their competitors. A footwear manufacturer has a registered trademark for the bubblegum flavoured scent used on a range of sandals. The strawberry scent of toothbrushes, three fruity flavours of combustion engine lubricants and the piña colada scent of a brand of ukuleles, have also been registered as US trademarks.According to IP Australia, “A scent trade mark is a distinctive smell used to distinguish goods or services. It can't be just the scent itself in isolation.”
To be approved as a registered trademark, “the scent must be an unusual or distinctive smell that is associated with a particular item or product, or the provision of a service.”
Applying to register non-traditional trademarks like shapes, colours, packaging or sounds is not as straightforward as applying for a word or logo trademark. We recommend taking advice from a trademark lawyer before going ahead with these kinds of trademark applications.
