Oops – Cadbury denied a purple trade mark in the UK

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We’ve covered this before in the past – the Trade Marks Act 1995 (Commonwealth) allows for “exotic” trade marks to be registered. These include colour marks (BP Green), shape marks (Coca-Cola bottle), sound marks (“aah, McCain, you’ve done it again… ding!”), and even scent marks (there’s only one… an eucalyptus golf tee).

Unfortunately as Cadbury found out, these exotic trade marks aren’t easily registered. They tried to apply for a colour trade mark over the colour purple, as commonly used on their wrappers. Nestle fought them over it.

In the case, the UK courts found that Cadbury’s application was unfortunately too vague as it merely described that the colour purple was predominantly used on it’s wrapping. While UK law is different to than Australian law, these are not unfamiliar concepts – and similar principles apply. Yes it is indeed possible to make an application for a colour trade mark in Australia, but it certainly is important that the application is precise, correct, and has enough evidence to support the applicant, in essence, having a monopoly over a colour, or a combination of colours.

Choosing a suitable Trade Mark to register – Not Confusing or Misleading

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There are lots of advantages in registering a trade mark. If you want to protect your branding, it’s well worth the cost. That being said, not all trade marks can be registered. IP Australia, the government authority responsible for trade mark registration, is responsible at first to review the application, and consider whether a trade mark can be accepted or not.

The Trade Marks Act 1995 (Commonwealth) sets a list of situations where a trade mark can’t be registered. We have been discussing these on this blog over the last few months, and have already been through a few.

Unsurprisingly one of the reasons why IP Australia would reject an application for the registration for a trade mark is in a situation where the proposed trade mark is either to likely to “deceive or to cause confusion”.

This usually means that if a proposed trade mark looks substantially like an existing trade mark (whether registered or unregistered), then that application must be rejected. It also could mean that if a proposed trade mark gives off the impression of something that isn’t true, then that application must also be rejected. To give an example, in 1937, a company selling radios applied to have a trade mark over Disney’s Mickey Mouse and Minnie Mouse. Disney successfully argued that while the characters weren’t trade marks, there was the suggestion that the product was associated with Disney, when the reality was that it wasn’t.

It’s a pretty common sense approach – don’t apply for a trade mark that looks similar to your competitors, or gives the impression that you are associated with your competitors.

Keep this rule in mind when choosing a suitable Trade Mark to register. Choose carefully, and stay tuned!

Choosing a suitable Trade Mark to register – Distinguishing the Mark

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There are numerous advantages to registering a trade mark – it’s certainly a worthy exercise if you want to protect your branding. Not all marks can be registered though, and IP Australia, the government authority responsible for the registration of trade marks, must consider whether the mark can be registered or not.

One of the rules that IP Australia has to apply is whether the trade mark can be distinguished from others. This actually sounds harder than it actually is – put it this way. You can’t possibly try to trade mark the word “Apple” for the apples from your farm. A wine that comes from the Hunter Valley can’t possibly register a trade mark reading “Hunter Valley Wine”.

Quite simply put, a trade mark that is descriptive cannot pass this test.

The Trade Marks Act 1995 (Commonwealth) provides more guidance about what the test is. It says that trade marks that would fail consist of marks that are ordinarily used to show the kind, quality, quantity, intended purpose, value, geographical origin, characteristic, or the time or date of the production of the good or services.

Keep this rule in mind when choosing a suitable Trade Mark to register. Choose carefully, and stay tuned!

Changes to Intellectual Property Laws

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On 15 April 2013 the provisions of The Intellectual Property Laws Amendment (Raising the Bar) Act 2012came into effect. This is a package of intellectual property laws that affect patents, trade marks, and a number of other matters.

We have previously written about this package on this blog. The new changes affect trade marks as well – particularly opposition procedures. In brief, the changes are:

  • Reduction of Notice of Opposition period to 2 months.
  • Extensions of time for a Notice of Opposition limited.
  • Streamline the procedure in relation to a Notice of Opposition.
  • Introduce two additional steps, being a Notice of Intention to defend, and a Ground of Particulars.

These changes are quite extensive and have been welcomed by a number of IP practitioners.

For more information about these new laws or how they may affect you please don’t hesitate to get in touch with our office.

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