Protect your valuable trade marks and gain a competitive edge.

Think pale blue and jewellery. Think Tiffany’s. Think orange and champagne - Veuve Clicquot. Triangular chocolate equals Toblerone, and the list goes on.

In today’s modern world of branding colours, shapes, smells, sounds and aspects of packaging , even textures and patterns can have just as an important role as the  brand name itself. In Australia for example, most people would immediately draw the connection between “Zoom, Zoom, Zoom” and car manufacturer Mazda and the Nokia ring has become so ubiquitous that no one needs to see the phone to know what brand it is.

Australia’s trade mark laws have kept up with the times and 1996, the Trade Marks Act was updated so that it is possible register shapes, sound, colours and aspects of packaging as trade marks.

There is, however, a catch - not every trade mark can be registered (no matter how famous it is or how much you have used it). The key is it needs to be distinctive such that – because of its use - people clearly associate that particular trade mark as being from one particular source. Descriptive trade marks won’t pass the test. For example, the colour fluorescent yellow for safety gear, red to symbolise danger or green for mint flavoured confectionary are all descriptive uses of colours and therefore trade mark registration would generally not be possible as other traders in the same or similar industries would have a genuine need to use those colours for their own similar goods or services.

On the flipside, going back to our example of the Tiffany’s blue box, that pale shade of blue unmistakeably represents the exclusive brand of jewellery to such an extent that it has been said that studies have shown that when given a Tiffany’s box, powerful associations with engagement, marriage, babies and fertility were conjured and a woman’s heart rate has gone up!

Trade mark registration can be a very powerful tool to protect all aspects of your brand, goodwill and reputation especially as it generally gives you monopoly rights in Australia but they must not be descriptive if you want to protect them as registered trade marks.

As a general rule trade marks are granted on a ‘first come-first served’ basis so if you think you have a valuable trade mark that is unregistered it is best not to delay.

This article, while only brief has hopefully given you a feel of how far brand protection can extend.

If you believe that a distinctive element of your brand might be capable of trade mark registration it is best to seek the advice of a lawyer or trade mark attorneys before acting further. Lawyers can also guide you as to how to use your brand to enhance the changes that it will obtain trade mark registration you were to apply for it.

This article was written by Sharon Givoni, Intellectual Property Lawyer (based in Melbourne, Australia). Sharon has an established and reputable intellectual property law practice called Sharon Givoni Consulting and clients in all industries. Her website can be viewed at: www.sharongivoni.com.au. © Sharon Givoni 2009

Disclaimer: The contents of this article are current as at April 2009 and are of a general nature only and cannot be relied upon as a substitute for tailored and professional legal advice.