What is a trade mark? 

What the the TMA says:

Section 10 of the Trade Marks Act 1995 (Cth) (TMA) provides:

17  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.

Section 6 of the TMA explains that a “sign” includesthe following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

We are familiar with traditional trade marks such as words, brands and devices.  The inclusion of shape, colour, sound and scent was introduced by the 1995 Act.

Some examples of non-traditional trade marks:

Some registered colour marks include:

Registered by CHEP Technology Pty Ltd in various classes relating to pallets and transportation.

Registered by the 3M Company for “stationery notes containing adhesive on one side for attachment to a variety of surfaces”.

Some registered shape marks include:

There is currently only one registered scent mark on the Australian trade marks register.  It is for a eucalyptus scent and is registered in relation to golf tees.

See if you recognise the following sound marks:

Sound Mark 1

Sound Mark 2

Sound Mark 3

What the courts have said:

Most judicial authority on the nature of a trade mark is in the context of the nature of trade mark use.  That will be the subject of a future post.  It is important to understand that whether a particular sign has been used as a trade mark is relevant to questions of infringement and registrability.

At the simplest level, a sign is not used as a trade mark unless it is used as a badge of origin – i.e. to identify the trade source of the goods or services in relation to which it is used.

See Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [19]; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645 at [43]; Nature’s Blend Pty Ltd v Nestle Australia Ltd (2010) 272 ALR 487 at [19].

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