Viennetta Ice Cream Heats up Court: Distinctiveness in Shape Trade Marks Catherine Lee CLAYTON UTZ

AUSTRALIAN INTELLECTUALINTELLECTUAL Law Bulletin PROPERTYPROPERTY Volume 16 Number 3 Information contained in this newsletter is current as at July 2003 Print Post Approved 255003/00767 Looking at smells and sounds: graphical representation of new trade marks Lauren Eade GILBERT + TOBIN General Editor The Trade Marks Act 1995 (Cth) allowed registration for the first time of a number of new forms of trade marks, including trade marks for colours, sounds Sharon Givoni and scents. There are some special problems for these new trade marks that do not Solicitor, Melbourne exist for ‘old’ trade marks such as words and devices. The first hurdle that must be met by any trade mark applicant is that of graphical representation. Graphical representation is required under reg 4.3(7) of the Trade Marks Regulations 1995 (Cth). Under s 40 of the Act, it is a ground for rejection of an application if a mark cannot be represented graphically. The purpose of graphical representation of trade marks is so that other traders can search the Register to contents determine whether there is any risk in using a particular mark or whether that mark is available for registration. 33 All trade marks under the 1955 Act were by definition capable of graphical Looking at smells and sounds: representation, being visible words and other signs. This is still the case for ‘new’ graphical representation of new shape and colour trade marks which can be represented in much the same way as trade marks old device marks. There are, of course, questions about how best to represent these 36 types of marks to maximise the monopoly afforded by registration (for example, Viennetta ice cream heats up how many perspectives of a shape are enough? Should a colour be described by court: distinctiveness in shape colour name, colour name and shade description, or industry standard colour trade marks system?). But these are not unique to the new marks.1 However, some new marks 39 do face special problems in that it can be very difficult, if not impossible, to Unlocking the mysteries of fair describe them accurately due to their very nature. basis: Lockwood v Doric Colour trade marks 41 Possible problems arise with colour trade mark applications, not because colours Earth Closet orders: cannot be accurately graphically represented — clearly, a swatch of the actual amendments to pleadings in colour claimed could represent a colour perfectly adequately — but because the patent cases databases offered for public searching by most Trade Marks Offices around the 42 world represent marks in black and white. Verbal colour descriptions such as What colour is your trade mark? ‘purple’ are somewhat unsatisfactory as they clearly encompass any number of shades and tones. For example, Cadbury brand chocolate is packaged in purple 43 packaging (dark purple),2 but so is Milka brand chocolate (light purple, or lilac). New Trade Marks Act in The United States Trade Marks Office at one stage had an elaborate cross- New Zealand hatching system for colour designations on trade mark representations.3 An example of this scheme in action is the trade mark below (Registration 701832), AUSTRALIAN INTELLECTUAL PROPERTY LAW BULLETIN descriptions broadly by reference to Image A colour names, and restrict the descriptions during the examination process if required to do so by the Trade Marks Office. As more applications are filed it may be necessary for applicants to describe colours with greater specificity (for Editorial panel example, ‘dark purple’ rather than just ‘purple’) so as to distinguish their applications from others already on the Simon Gilchrist Register. Solicitor, Gilbert + Tobin, Sydney Sensory trade marks Sue Gilchrist which was filed in Australia using the More significant problems arise in the Partner, Freehills, Sydney cross-hatching system (see Image A). case of the two types of trade marks The cross-hatching system was in fact that can be described as ‘sensory’ rather Yves Hazan even less accurate than a plain words than merely visual; that is, scent and Hazan Hollander, Sydney colour description, as each hatching sound trade marks. Marks of this kind style was used to encompass a range of may face a substantial hurdle under Dr Patricia Loughlan tones and even colours; for example, s 40. Unlike the marks above, it is Faculty of Law, the same cross-hatching was used to obviously not possible to provide a University of Sydney indicate both red and pink. The scheme picture of a sensory mark. Indeed, IP has since been abandoned. Australia typically indexes such marks 4 Debrett Lyons Highly specific graphical colour without even a title; the description of Partner, Berwin Leighton Paisner representation systems are also the mark is placed in the endorsement. London, UK Editor available (for example, the Pantone Matching System, which describes Sound trade marks colours and tones by reference to That said, sound trade mark Caroline Morgan numerical and letter combinations) and applicants have been provided with a Corporate Counsel, have been used in industry for many relatively simple solution, as the Trade Copyright Agency Ltd years. However, these systems generally Marks Office has accepted that a only make sense in combination with musical score notation of the sound Des Ryan an appropriate reference chart. These claimed is acceptable graphical Patent Attorney and Solicitor, are not widely available and as such representation.5 This largely replicates Davies Collison Cave, Melbourne these systems are not of much overseas practice, for example that of assistance to the layperson searching the United States Patents and Patrick Keyzer the Register. Trademarks Office. Only four of the 11 Faculty of Law, University Applicants can take some comfort, Australian sound trade mark of Technology, Sydney however, as at least at present the registrations presently use this kind of Australian Trade Marks Office practice representation.6 is to allow bare colour names to be Representations of sound trade marks used to describe colour trade mark of any kind can be fairly confusing to applications. A sound approach for the layperson. For example, the extent applicants is to draft colour mark of the monopoly claimed in Registration 785034 would be unlikely to be apparent to the person unfamiliar Image B with the Dolby Digital signature tune, whether that person relied on the graphical representation (see Image B) or on the endorsement: The trade mark consists of the sound of a musical tune consisting of a crescendo and decrescendo played by a rubbed crystal, base waterphone, bowed piano, and contrabass, during which five notes are played by a struck crystal, lasting for a duration 34 ...................................................................................................................................................................................................................... vol ●16 no ❸ July 2003 AUSTRALIAN INTELLECTUAL PROPERTY LAW BULLETIN of approximately three seconds. like something else is readily described; applications for colour, sound and scent Of course, some sounds are not hence the Trade Marks Office in its trade marks to ensure that the graphical conducive to representation by musical Examiner’s Manual selected the representation requirements are met. score. In this case, applicants have no relatively comfortable example of ‘the While it is desirable to frame a trade choice but to describe the sound in scent of apple blossoms’, a trade mark mark description as broadly as possible words. An infamous example is already registered in England. The only so as to increase the monopoly afforded Unilever’s New Zealand Trade Mark Australian mark accepted for by registration, it may be necessary for Registration 247094 for ‘a squeak registration was for the ‘smell of beer’ new trade mark applicants to be rather produced by the friction of thumb or on dart flights.8 Pending Application more specific when describing new trade forefinger on dishware’. A less successful 936188 claims ‘the smell of lemon for marks than usual. attempt was Harley Davidson Inc’s tobacco’, and has received an adverse A sound strategy is to file an United States Trade Mark Application report. In the US, scent registrations application with a broad description but 74/485,2234 for the ‘exhaust sound of have been obtained for the smell of to have already prepared a ‘fall back’ applicant’s motorcycles, produced by grape,9 cherry10 and bubblegum11 for narrower description which can be used V-Twin, common crankpin motorcycle industrial oils. These scents, then, to amend the application if the Trade engines when the goods are in use’, would not at first glance appear to Marks Office requires. The narrower which was ultimately abandoned. The present problems. However, a trade description should ideally be prepared Australian Trade Marks Office mark application for the ‘smell, aroma, prior to filing so that an applicant can Examiner’s Manual itself suggests that or essence of cinnamon’ was rejected in be sure that the mark is in fact capable an acceptable graphical representation of England, in part because the of specific description before wasting a sound trade mark would be ‘CLIP, description of the mark was too prosecution costs. ● CLOP, MOO’ so long as this was subjective to amount to a sufficiently coupled with an appropriately accurate description of the trade Lauren Eade, Lawyer, descriptive endorsement such as ‘the mark.12 Gilbert + Tobin, Sydney. sound of two steps taken by a cow on But what of ‘invented’ or combined pavement, followed by the sound of a scents? Existing chemical and sensory Endnotes cow mooing’.7 These verbal descriptions notation systems for scents have been 1. As to the most appropriate means of sounds are, if anything, even less clear developed both in the chemical of drafting endorsements for graphical than musical notations. industries and in those industries where marks so as to maximise the available It is doubtful that graphical scent is critical (for example, perfume monopoly; see Levi Strauss & Co Ltd v representations of sound of the above and food industries).

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