Sounds, smells and shapes - Has trade mark protection been extended too far in Australia?

Originally, the role of trade marks was as a consumer protection tool, linking goods to their supplier. However, trade marks have evolved over time into a form of intellectual property right whose main purpose is to protect the goodwill and reputation of the trade mark owner¹⁾. As advertising methods have become more sophisticated, the goodwill and reputation of trade mark owners is now often associated with a broad range of signs used in the course of trade. Sounds, smells and shapes are amongst the newest forms of trade marks to be provided for in the Trade Marks Act²⁾ (“the Act”).

Advertising campaigns frequently use multiple signs concurrently and repeated in different advertisements to compound the public’s awareness of a trader’s goods or services. These signs often include:

• an animated form of a static trade mark such as the polar bear featured on Bundaberg Rum’s television commercials and bottle labels.
• a jingle sung which includes a word mark in its lyrics such as seen in Sakata’s television commercial and their word mark used on their packaging
• reference to the shape of a product in the advertising slogan such as Nestlé’s slogan “get a hole lot more out of life” used to sell their ring shaped candy
• a noise included in a slogan repeated in several advertisements for different products such as McCain’s slogan including a “ping”.

The commercial value associated with signs other than the commonly used word and device marks is unquestionable. However, the specific allowance for sounds, smells and shapes in the Act encourages an analysis of these types of signs and their suitability for protection as trade marks.

The definition of a trade mark in the Act was broadened to encompass the requirement of the TRIPS Agreement³⁾ that the subject matter which is able to be protected by a trade mark should include:

Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.

It is interesting to note that sounds, smells or shapes are specifically referred to in the Act whereas the TRIPS Agreement makes no mention of these types of trade marks.

As provided for by this definition, s40 of the Act provides: An application for the registration of a trade mark must be rejected if the trade mark cannot be represented graphically. This would seem to make it difficult for non visual trade marks such as sounds and scents to be registered.

On a preliminary examination, it would seem that it is difficult to represent sounds and smells graphically, unless by way of indirect description such as a graph of the sound’s frequency changes or a spectrometer analysis of the composition of a smell. However, the Regulations provide a method to overcome this difficulty⁴⁾ and sounds in the form of music have been frequently described by submitting the musical composition in conventional written form.

A trade mark is defined in s17 of the Act as:

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

Where “sign” is defined by s6 of the Act to include the 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.

By being defined as “including” the listed types of signs, the legislation has left it open that there may be other signs that are registrable.

While sounds, smells and shapes have not been explicitly referred to in previous legislation, the Trade Marks Act 1955 (Cth) low for such marks to be registered by providing that “any other distinctive mark” could be registered.

One of the problems that seem to be associated with sound trade marks is that the sound made by that object is likely to be held incapable of distinguishing that good from similar goods made by other traders⁵⁾. Similar goods tend to make similar noises, for example the operation of the clicking mechanism on all retractable ballpoint pens sound fairly similar.

Alternatively, the sounds used in advertising are often quite simple and may need to be used by other traders, for example the sound that occurs when a bottle of carbonated drink is opened.

As at 22 June 2006, there had been 59 applications for registration of a sound trade mark recorded in the trade mark register. Of those 59 applications, 25 have been registered and 12 are pending.

Of the 22 applications that have lapsed, one was withdrawn and 21 of them failed to overcome at least one trade examiner’s adverse report (11 applicants responded to two or more adverse reports, with one applicant having responded to seven adverse reports). These applications included sound trade marks such as:

• “PIP, PIP, PIP, PIP, PIP” produced in uniform tone in quick succession and a chime sound consisting of five pitches sounded one after the other in rapid succession, for telecommunication services
• a click or clicking sound and the click of a latch, for surgical and medical equipment
• an Australian football match siren, for various goods including electrical equipment, jewellery, paper products, clothing, games and sporting equipment
• a five tone audio progression of notes, for various electrical equipment
• a high pitched ping sound of short duration, for various foodstuffs
• a cork being removed from a bottle, for various beverages
• two short pitches sounded three times (phonetically bl-eep, bl-eep, bl-eep) for or various electrical equipment and telecommunication services
• a pane of glass being smashed by a projectile for wholesaling and retailing various electrical and duty free goods
• repeated short consistent brushing sound for various dental care products and other toiletries
• a person whistling followed by a dog barking for various goods for animals and live animals
• tunes played by gaming machines, for gaming machines and their accessories
• three descending staccato chords in the key of G major for various electrical equipment, paper goods, business services, financial services, telecommunication services, entertainment and education services, computer hardware and software services and legal services

A freedom of information request on these marks may reveal a common element to the adverse trade mark examiner’s reports. However, for the applications which had a divisional application filed, the following information can be obtained without an FOI request. This information shows the expected repeated element as being predominantly objections based on s41 of the Act.

Of the 25 that are registered,

The registered trade marks include, amongst others:

• the sound of the word “sproing” for floor coverings and underlay, including carpet underlay laminates incorporating rubber or rubber substitutes
• the spoken words “Ah McCain” followed by a “ping” sound, followed by the spoken words “you've done it again” for various foodstuffs
• a tune resembling a Sicilian waltz for pasta sauce
• the spoken words “just like that” followed by the sound of fingers clicking for advertising, business services, education and training and entertainment

When you compare the successfully registered trade marks with the lapsed applications, the sounds registered tend to be quite different from the sound you would expect to associate with the goods and services included in the application. The registered trade marks that are comprised of a musical composition tend to be more complex or more widely recognised than the musical compositions in the applications that have lapsed.

Although not many applications have been filed for sound trade marks, the provision for registration of such marks and consequent protection a trader’s goodwill and reputation associated with such marks adds commercial value to sound trade marks. It is likely that this form of trade mark registration will become increasingly popular as traders become better informed about the protection available for this type of trade mark.

Having sound marks being expressly included as trade marks that may be registered, provides intellectual protection for sounds that may not have been eligible for protection by copyright as there is no requirement for originality in the sense of a minimal degree of skill an effort⁷⁾ in creating the trade mark as there is with works protected by copyright.

In accordance with subreg 4.3(7), which requires that for sound marks “A concise and accurate description of the trade mark” be supplied, the applications that have been filed for sound trade marks generally use the phrase “The trade mark is as described in the endorsement” and / or a musical score as their graphical representation and / or a sound recording and / or a written description of the sound. There does not seem to be any objection by the trade mark examiner to the use of these methods to overcome the requirement of s40 of the Act.

In comparison to sound trade marks, even fewer applications for the registration of a scent trade marks have been filed and it appears that it is more difficult to have them accepted by the registrar.

All the applications that have been filed for scent trade marks have used as their graphical representation the phrase “The trade mark is as described in the endorsement”. As with sound marks, there does not seem to be any objection by the trade mark examiner to the use of this method to overcome the requirement of s40 of the Act.

As at 22 June 2006, there had been only seven applications for scent trade marks filed. Six of those applications had lapsed, five having failed to overcome the trade mark examiner’s objections in their first adverse reports and one having been accepted, but not having proceeded to registration. The application that was accepted was for the strong smell of beer used for flights for darts for goods in class 28 including darts.

The applications that failed to overcome the trade mark examiner’s objections include the trade marks:

• the scent of musk applied to human skin by hand painting the liquid scent over temporary tattoo transfers, stencils and other body art designs for goods in Class 3 including perfumery, essential oils and cosmetics
• the scent of eucalyptus, including the eucalyptus scent derived from eucalyptus trees and/or from eucalyptus essential oil for goods in Class 3 including powders/washing powders used for washing clothes by machine, by hand and by soaking
• the scent of coffee for goods in Class 3 including self tan lotions, sun-tanning preparations, hair lotions, hair shampoos, hair conditioners, essential oils, lotions for cosmetic purposes and make-up preparations
• the scent of Melon Midori (Bronson and Jacobs) for goods in Class 3 including self tan lotions, shampoos and conditioners, hair products, sun-preparations, body lotions and perfumes
• the scent of lemon for goods in class 34 including tobacco; cigarettes; cigars

The seventh and most recent application had an adverse report recorded as at 25 October 2005, which allows the applicant a further seven months to overcome the examiner’s objections. The applicant for this trade mark is the same applicant as applied unsuccessfully for the trade mark consisting of scent of lemon for goods in class 34 detailed above. The live application is for the smell of lemon in relation to goods in class 34, but this time limited to cigarettes.

The parent application had s41(6) given as the grounds of objection and the divisional application had s41 given as the grounds of objection.

It is difficult to come up with an example of a smell trade mark that is not descriptive of the goods or services for which it is associated. An example of a smell trade mark that may qualify for registration could be a non-food related smell used to scent the air in all restaurants belonging to the same franchise so that patrons are given the impression of constant quality and service at all the franchised premises.

Many smells used by traders are either inherently incapable of distinguishing goods because of their wide spread use, such as the scent of pine for disinfectants and smells associated with goods designed to mask another unpleasant smell is being used in a functional way⁸⁾. The problem with use of the smell in a functional way is also likely to arise where a smell is used with goods characterised by their fragrance such as perfumes and other toiletries.

Seeing as it is difficult to give an actual example of a smell trade mark in current use that would qualify for registration, this appears to be a form of marketing that is not widespread. It is unclear whether this form of trade mark will be applied for and registered in significant numbers in the future.

However, future technology may make it possible to incorporate smells into a trader’s get up more easily and we may be yet to see these types of marks being used to their full extent.

The case law which arose under Australia’s previous Trade Mark Act⁹⁾, prevented shapes from being registered as a trade mark as the shape of a good was seen to be a characteristic of the good itself rather than a trade mark. For example, an application to register the shape of a ‘lifesaver’ candy was refused¹⁰⁾.

Compared with sound and smell trade marks, shape trade marks applications have been much more popular with traders. As at 22 June 2006, 1637 applications had been filed and of those 479 have been registered and 268 are pending.

Of the trade marks that have failed to be registered, many of the shapes appear to be shapes that other traders may need to use or are connected to the actual functioning of the good such as containers of a commonly used shape.

One of the problems commonly associated with this form of trade mark is the need for the shape to operate as a trade mark. This issue has been examined by the courts on multiple occasions and the key guidance in relation to the registrability of shape marks given by these decisions includes:

• Goods themselves can act as a trade mark, for example where the features of a piece of candy, which was shaped as a Coca-Cola bottle, were used to indicate the origin of the candy¹¹⁾
• A shape may only be registered as a trade mark if the goods remain distinct from the mark. This is the case because a functional shape, such as a triple headed electric razor is incapable of operating as a trade mark¹²⁾
• Shapes commonly used for domestic items should not be registrable¹³⁾
• Shapes used for goods commonly made by other manufacturers in a range of other novel shapes are not used as trade mark, rather as a style for one trader’s particular range of that type of good¹⁴⁾
• In some cases, the entire shape of a good may be registered, for example where the shape was entirely concocted¹⁵⁾.

As with all other marks, the registrability of sound, scent and shape trade marks are judged in the same way as all other more commonly registered marks. If other traders without improper motive are unlikely to want to use the mark because of its ordinary significance, sound, scent and shape trade marks should be considered inherently adapted to distinguish.

As awareness of both traders and advertisers in relation to these new types of trade marks increases, it is likely that applications for registration of these trade marks will become more common.

As traders adopt increasingly elaborate marketing techniques, the commercial value of sound, scent and shape trade marks may also contribute to the popularity of registration of these trade marks.

It is possible that the list of signs specifically included in legislation may in the future be expanded to other signs such as texture and possibly even cinematograph films as defined by the Copyright Act 1968 (Cth).

An example of a cinematograph film that may be protected would be a cartoon in which an animated character sings a company advertising jingle.

By specifically including sound, scent and shape trade marks, the Act allows traders greater flexibility in their choice of “insignia of goodwill”¹⁶⁾ that is capable of protection by registration as a trade mark. In doing so, the legislation equips traders with the ability to protect their investment in marketing and branding techniques that take advantage of modern technology and the widening scope of media with which marketing and branding occurs.

However it is important to consider that the owners of sound, scent and shape trade marks may face a more difficult task that owners of more traditional trade marks in proving that another trader’s allegedly infringing use is use as a trade mark, leading to difficulties in enforcing the rights associated with registering such trade marks. This may impact on the perceived value of these forms of registered trade mark.