Five-Dimensional Trade Marks

The “What”

Gone are days where brands are just made up of a word or logo.

The concept of 5-dimensional trade marks takes into account the scents, sights, smells, touch and even movement associating with consumer psychology.

Australian trade mark laws have been updated to allow these “non traditional” trade marks to be registered.

Whats in a Colour?

Take the colour purple for chocolate…

Some ten years ago, after the new trade mark laws came into effect, an independent research company was commissioned by Cadbury Schweppes to run what seemed a straightforward market test.

Consumers were presented with two identical blocks of chocolate – one wrapped in purple and the other in green, neither with any other identifiable markings. The survey asked participants to identify which brand the colours evoked. Without any prompting, more than 80 per cent responded that the purple block was Cadbury chocolate.

While this may not sound so remarkable, since companies conduct consumer research all the time, the survey stood out as it was later used to support a trade mark application for the colour purple. Its marketing efforts paid off and after ten years of trying to convince the Australian Trade Marks Office to register its purple trade marks, they were finally registered in September 2009 for a number of pantone shades giving it a “purple reign” over block chocolate and boxed chocolate.

However, some other brands were not so lucky.

Opaque is not so Groovy

In 2011, the makers of Grove fruit juice were unable to obtain a colour registration for the opaque white colour of their juice containers on the basis that the colour had the functional purpose of protecting the juice from harmful UV rays and preserving vitamins. This was a disappointment for the juice company who had invested hundreds of thousands of dollars in promoting their bottles.

The “Why”

It’s a known fact that businesses can (and do) invest a lot of resources into their non-traditional trade marks.

Now more than ever, companies are able to demonstrate that their branding devices have all gained a secondary reputation in the marketplace over time, such that consumers recognise the device and associate it exclusively with that company.

Martin Lindstrom, a branding expert, makes the point that a woman’s heartbeat increases when she sees a light blue box.

The law recognises that these non-traditional branding devices can become an incredibly valuable asset for businesses and provides protection for this accumulated reputation.

The “How”

So what’s the catch?

First of all, as is the case with traditional trade marks, a non-traditional cannot be descriptive. Think – fluorescent yellow for safety gear, mint for biscuits or orange for a carton of orange juice.

It is important to bear in mind that registering non-traditional trade marks are harder because there is usually more evidence required in trying to monopolise a colour, shape or sound.

The more unusual the colour, shape, etc is in the field in which you plan to use it, the better your chances are.

The challenge of “graphical representation”

The mark must also be capable of being graphically represented, that is, described in words or through an image. This can be a real challenge with scents, as there is no such thing as a scratch-and-sniff trade mark application! There is, however, one registered trade mark in Australia for a “Eucalyptus Radiata scent”Australian registered trade mark no. 1241420. for golf tees.

If you want to get protection over the more unique aspects of your brand, here are a few useful tips that you should apply from the outset.

• Choose a very distinctive brand element that no one else is using.
• Ensure that it does not have a functional purpose.
• The more unusual it is, the better.
• Use it consistently on its own.
• Support it by a marketing strategy that tells people it’s you. For example, in the banana case above, their website reminded people to “look for the red wax tip” to know where the bananas came from.
• Use the TM symbol where possible.
• Monitor your competitors.
• Ask yourself: Does your non-traditional mark have a significant association with a brand in its own right, without reference to the actual brand name?

Ultimately, we can help you assess whether you would have good chances of success.