Australia: Hologram, Texture and Taste Trade Marks: Get Set for Moving
Lights! Camera! Action!

As unbelievable as it may sound, we must all get ready for a 'new generation' of trade marks including movement, hologram, taste and texture marks. Earlier this year the Trade Marks Office issued an official notice about a change in practice in respect of non-traditional marks.

The Trade Marks Register is already home to many non-traditional marks including shape, sound, colour and scent marks. Some examples of these marks include Lindt's gold chocolate Easter Bunnies, Tiffany's blue packaging, Jean Paul Gaultier's perfume bottles and the sound of the "PING" in the "Ah McCain You've Done It Again" advertising campaign.

More recently, moving images such as the Nokia handshake on mobile phones, the M&M characters in animation and an animated sequence mark by Microsoft have also been registered as moving trade marks in Australia.

Some of the new types of trade marks are discussed below.

Moving marks

Applicants who apply for moving trade marks still need to satisfy all the usual elements required to obtain trade mark protection. They are required to submit clear representations of the trade mark together with a detailed description of it, showing and describing all of the mark's features. A copy of the actual trade mark (for example, a DVD or video) must also be submitted to the Trade Marks Office. The moving trade marks can be viewed on the Trade Marks Register.

Holograms

Hologram marks are also new. Examples of hologram marks include the Glaxo Group's trade mark registrations for the holograms that appear on their packaging of goods such as toothpaste, dental floss and mouth wash.

Applicants who apply for hologram marks will, in addition to satisfying the usual elements required for trade marks, need to describe each view formed on the hologram when it is moved about. Representations of each view will also need to be submitted to the Trade Marks Office when applying for the mark.

Texture

It may also be possible to successfully apply for a texture as a trade mark. In addition to satisfying the usual criteria, the applicant for the texture mark will need to provide an appropriate representation and description of the texture. To be successful, the texture would need to be something that was not common to the particular trade. For example, textures such as linen, leather, silk or lace would not be capable of distinguishing the mark within the clothing trade.

Taste

There are currently no trade mark registrations for taste in Australia. However, taste trade marks have been the subject of applications in the United States and the European Community. The Australian Trade Marks Office has observed that it is very difficult to determine how a taste or flavour could serve to distinguish the applicant's goods, though "taste" does appear to fall within the definition of a sign under the Trade Marks Act.

Applicants who apply for taste trade marks need to clearly describe the flavour. It will also need to be clear from the description how the taste is to be used in respect of the goods claimed.

It is very difficult to acquire a trade mark for taste. Children's pain relieving syrups and other medicines that have cherry or strawberry flavouring for example, are not adapted to distinguish the taste because the flavours have a functional purpose.

In the US, a trade mark application for the taste of an orange flavoured antidepressant medication was rejected on functional grounds. The Trade Marks and Designs Registration Office in the European Union also rejected a pharmaceutical company's attempt to register the taste of artificial strawberries.

With the current increase of applications for non-traditional signs, it is important to assess your brand to determine whether you can obtain trade mark protection for marks that you may not have considered previously.

Alexia Marinos of Gadens Lawyers is a Registered Trade Marks Attorney and can provide you with advice on trade mark registration in Australia and overseas.

For more information, please contact:

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.