Some other types of trade marks you can apply for include:
- Series of trade marks
- Sound trade mark
- Non-English trade mark
- Movement trade mark
- Shape trade mark
- Colour trade mark
- Scent trade mark
- Trade marks for wine
- Trade marks for plants
- Figurative marks
The application fee for a series application is different to a standard application. However, there are narrow criteria that must be met in order to qualify for a series trade mark.
You should carefully consider whether your trade marks meet these requirements before filing a series application as the series fee is not refundable.
Criteria for a valid series application
Trade marks in a series must closely resemble each other and must differ only in at least one of the following ways:
- statements or representations as to the goods or services being claimed
- statements or representations as to the number, price, quality or names of places
- the colour of any part of the trade mark.
Valid series application
An example of a valid series application:
- IDAK CLOTHING
- IDAK FOOTWEAR
- IDAK HEADGEAR
Under class 25 for clothing, footwear, headgear.
In this example, the trade marks resemble each other because the essential feature IDAK is common to each and the additional words do not cause significant differences.
The ways in which they differ (the words CLOTHING, FOOTWEAR, HEADGEAR) fall under category (A).
Invalid series application
An example of an invalid series:
In this example the words resemble each other with the only difference being between upper case and lower case. This difference isn’t one of the three categories above, so this example would not qualify to register as a series trade mark.
A sound trade mark gives you protection for a sound in relation to a good or service.
You will need to include a sound file when submitting an application for a sound trade mark.
You can hear some examples of applications for sound trade marks below.
Trade mark number: 844282
The Intel sound trade mark, which consists of a five tone audio progression of the notes D Flat, D Flat, G Flat, D Flat and A Flat.
Trade mark number: 941361
The ‘Happy Little Vegemites’ tune.
If this player is not working you can download this MP3.
Trade mark number: 1051140
The O’Brien sound trade mark, which consists of the vocal harmonisation of the letter 'O' followed by the word 'O'BRIEN' rendered as 'O', 'O', 'O', 'O'BRIEN'.
If this player is not working you can download this MP3.
Trade mark number: 1062639
The Boost Juice sound trade mark, which consists of the sound of the word BOOST pronounced with the 'OO' part of the word substantially elongated and an emphasis placed on the 'T'.
If this player is not working you can download this MP3.
Your trade mark does not have to be in English. It may be a non-English word in Roman characters (such as ‘Volkswagen’), or non-Roman characters (such as ‘貢茶’ for the tea franchise ‘Gong Cha’).
There are certain requirements for non-English trade mark applications:
- For non-English words in Roman characters, an English translation of the word is requested.
- For non-Roman characters, you will need to provide an image of the characters, along with a transliteration of the non-Roman characters into Roman characters. If the non-Roman characters have meaning in English, a translation will also be required.
If you do not supply a translation or transliteration when you submit your application, it may be requested during examination.
A movement trade mark gives you protection for a movement in relation to a good or service.
You will need to include a video file when submitting an application for a movement trade mark.
Examples of movement trademarks:
- the Toyota jump trade mark, (trade mark number 1676600) which consists of the silhouette of a woman leaping into the air from a standing start extending her arms up above her head and pulling her legs up behind her by bending her knees at the same time
- the trade mark of the movement of the red M&M (trade mark number 919012)
- an animated sequence belonging to Microsoft (trade mark 1321792) involving four coloured dots swirling to form the Microsoft Windows logo.
A shape trade mark is a three dimensional shape used to distinguish the goods or services of one trader from those of other traders. Examples of existing shape trade marks include toothbrushes, biscuits, chocolates, pens, bottles and other packaging. Shapes with significant functional features are difficult to register.
A shape already in common use and required in the normal course of trade can’t be protected. You can’t gain a trade mark for a normal wine bottle or a standard shoe box, for example.
When applying for a shape trade mark, you may need to show that the shape:
- distinguishes your goods or service from other traders
- is not a copy of a shape already existing as an item in the marketplace.
A shape trade mark differs from a design right as it may already exist in the marketplace before it is formally registered as a trade mark. However, a design must be new and distinctive. This means if you have already publicly disclosed your design (e.g. exhibited, sold copies, posted your design on a website), you may not be able to register it.
A design is the overall appearance of a product. This can include shape, configuration, pattern and ornamentation which, when applied to a product, give it a unique visual appearance.
A specific colour can function as a trade mark, however, the process of registration is not easy. Colour trade marks may need to be supported by significant evidence of use to achieve registration.
You must show that the public has come to identify the colour with your particular goods or services.
For example, Cadbury had used a particular shade of purple as a trade mark for chocolates since about 1994. By amending their application, Cadbury was able to register a trade mark for a single shade of purple when used for boxed and block chocolates.
Trade marks for combinations of colours can be easier to register as there may be a less common need for their use. One example of a combination is the red and yellow flags used by Surf Life Saving 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. Scent trade marks are difficult to register.
To qualify as a trade mark, the scent must be an unusual or distinctive smell that is associated with a particular item or product, or the provision of a service.
A scent trade mark was first recognised in 1990 in the United States, where a scent, described as a high impact, fresh, floral fragrance reminiscent of plumeria blossoms, applied to sewing thread.
Like any other trade mark, for a scent to be registrable it must be able to be represented by way of a concise, written description of the scent and how it will be applied.
Example of an Australian scent trade mark:
Eucalyptus Radiata scent applied to golf tees (trade mark number 1241420).
Before choosing a trade mark or designing a label under which wine or alcoholic grape products will be imported, exported or sold on the Australian market, you need to be aware of certain requirements and regulations.
Restrictions on registering class 33 trade marks
Class 33 covers alcoholic products such as wine. An application for a trade mark in this class will be assessed according to the regular trade mark criteria, as well as additional considerations that apply to wine terms.
Geographical indications and protected wine terms
A geographical indication (GI) identifies a good as originating in a specific territory, region or locality where a particular quality, reputation or other characteristic is essentially attributable to that geographical origin. Examples of wine GIs are ‘Hunter Valley’ and ‘Barossa’.
A protected wine term may be either a ‘traditional expression’ or a ‘quality wine term’. Traditional expressions and quality wine terms indicate the method of production or the quality, colour or type of a wine. Examples include ‘clásico’ and ‘reserva’ for Spanish wines, and ‘tawny’ and ‘vintage’ for Australian fortified wines.
An application to register a wine trade mark that contains a protected GI or a protected wine term may be refused or made subject to conditions of use.
Before applying for your trade mark, you should check the Register of Protected GIs and Other Terms, and registered Australian verification trade marks, to identify whether your trade mark contains, or resembles, a protected GI or wine term.
A geographical name is the name of a territory, region or locality in Australia or overseas. Unlike GIs, a geographical name does not have to impute a particular quality, reputation or other characteristic to the relevant goods. For example, ‘Margaret River’ is a geographical name and also a GI for wine, while ‘Sydney’ is a geographical name but it is not a geographical indication for wine.
Generally, you won’t be able to register a geographical name as a trade mark unless you add your own distinctive elements, such as a logo. An application to register a geographical name as a trade mark may be refused or made subject to conditions of use.
Applying for a trade mark for wine
Before filing for a trade mark for wine, you should check whether your application contains:
- a geographical name (which may be refused or made subject to conditions of use)
- a geographical indication already registered
- a registered geographical indication, traditional expression or additional term for use in the European Union or any other countries with whom we have an agreement to trade in wine or alcoholic grape products
- a name considered likely to be entered into the Register in the future
- a quality wine term or additional term for use that appears in the Register
- a name considered a translation of a geographical indication, traditional expression, quality wine term or additional term appearing in the Register
- a word or expression that resembles a geographical indication, traditional expression, quality wine term or additional term appearing in the Register and is likely to be mistaken for that term.
Where a name or address of a winery is included in the representation of a trade mark application, they should not be used in a way likely to mislead as to location from which the wine or alcoholic grape product originated.
Where the trade mark itself consists of words that are able to be registered, it may assist the progress of an application if just those words, rather than the whole wine label, are lodged as the representation of the trade mark.
A wine success story
Penfolds is one of Australia’s oldest wineries. Dr Christopher Penfold began making medicinal tonic wine for his patients after moving to Adelaide from England in 1844. The winery grew in popularity and became a business in itself, initially run by his wife Mary Penfold.
The company made the decision to build their brand based on the family name, rather than any geographical indications.
Penfolds' catalogue of trade marks now help wine drinkers identify the quality and history associated with the brand.
Legislation and offences
The Wine Australia Act 2013 (the WA Act) and the Wine Australia Regulations 2018 contain information which may help you decide whether to lodge an application for registration of a trade mark in class 33.
The WA Act empowers Wine Australia to determine conditions of use for registered GIs and other terms. These conditions of use are recorded in the Register.
It is an offence to use a false or misleading description on wine or alcoholic grape product labels. This can include using a GI or geographical name in a manner that is false or is likely to mislead or deceive consumers. Penalties include large fines and up to two years imprisonment.
A trade mark for plant material relates to the source of the plant material, such as the grower, producer or seller, and not to the plant material itself. If you are looking to protect the plant variety itself you might want to consider a plant breeder’s right.
It should only be used in the following ways:
- In connection with a number of different plants. For example, ‘Crazy Elephant Nurseries’ selling a range of trees, shrubs, seeds, etc.
- If used in connection with a single variety of plant, it should always appear in close proximity to the accepted scientific and variety/cultivar name for that plant.
For example, the ‘Gold Lace’ variety of Acacia cardiophylla is sold by Crazy Elephant Nurseries and also by their competitor down the road. In order to differentiate between the wattle sold by Crazy Elephant Nurseries and the wattle sold by the competitor, the following label should be used:
Crazy Elephant (TM)
Acacia cardiophylla 'Gold Lace'
What isn’t a trade mark for plants
A plant name can’t be registered as a trade mark because the same type of plant material can potentially be sold by a number of different traders.
Plant names fall into the following categories:
- scientific name (genus and species)
- variety/cultivar name (which further differentiates plants within the same genus and species)
- official synonym (available in the Australian plant breeder’s rights search)
- common name (which often reflects a characteristic of the plant)
- trade name or trade designation (which is an unofficial synonym for a specific variety/cultivar ).
You may want to register a trade mark that is a combination of words and a logo. This is known as a figurative trade mark. In this case you may choose to register the words as a separate word mark as well as the logo. This will give you the broadest possible protection for your trade mark. It also enables you to retain protection for the words separately even if you change your logo.