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The not-so-common trademarks

The not-so-common trademarks


Australian Trademarks

Trademarks are a form of Intellectual Property that allows you to distinguish the goods or services of your business from those of other businesses.

It gives you exclusive rights to commercially use, license or sell the trade mark. This means that no one else in Australia can commercially use your trade mark within the class of goods and services its registered under.

IP Australia is the government body that regulates all Intellectual Property in Australia.

The importance of protecting your business with trademarks

If you're just starting out in business, it's natural to be a little nervous about protecting your brand. After all, there are so many things to think about: What will my business look like? How do I make sure that my customers know about me? What services can I provide and what's my target market? But one thing that shouldn't be too far down your list of priorities is trademark protection.

Trademarks protect your business by distinguishing it from others and helping you stand out from the crowd. They help build customer loyalty by allowing them to identify with your brand and feel comfortable doing business with you. Most importantly though they help create "brand equity", which means they allow consumers to associate certain qualities with products or services (for example fair prices, high quality etc).

What does an Australian trademark do?

A registered trademark can act to protect your brand, business and investment. It also helps to protect your ideas, creativity and intellectual property.

A registered trademark gives you the exclusive right to use the mark on or in connection with goods or services for which it is registered. A registered trademark can also be used as a badge of origin for those goods and services. Trademarks are distinctive signs that distinguish one trader from another, such as a name logo or colour scheme that identifies a product or service with its provider (e.g., McDonald's golden arches).

What can be trademarked?

So you are interested in trademarks and are not sure where to start... Well here's a list of what you can trademark:   

  • Logo
  • Letter or number
  • Word or phrase
  • Sound
  • Smell (Scent)
  • Shape
  • Picture
  • Movement
  • Aspect of packaging

You can trademark one, or a combination of them, such as a word and a logo.

Did i read that right?

Oh yes, that's right, you can also trademark scent. Although uncommon and widely unknown a scent can be registered as a trade mark.

In Australia, scents can qualify for registration if certain requirements are met.

There are currently two registered scent trade marks on the Australian Trade Marks Register; these are Eucalyptus Radiata and Cinnamon.

So how can scent be trademarked?

Under the Trade Marks Act 1995 (Cth) (the Act), 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’.

A ‘sign’ is defined in the Act to include a scent.

Thus, you can trademark a scent with IP Australia.

The requirements

There are a number of requirements that must be met in order to register a scent trademark, which is also common for all other types of trademarks.

The most important requirement is that the scent must be capable of distinguishing one’s goods or services from those of other traders.

In other words, the scent must be something unusual or unique to the goods or services they are applied, and must have been added to identify the source of those goods or services.

The scent cannot be a natural or expected characteristic of the product itself (such as, the scent of lavender from the flower; two already trademarked in Australia) and cannot serve a functional purpose of masking a scent (for example, lemon scented candles).

Another part to consider is whether owners of the trademark would want to use the trademarked scent in there day-to-day business operations; for example a scent which makes a product more attractive such as, herbal scents for shampoos.

General scents that are too common to an industry cannot be trademarked that allows one company trading in that industry to control and use.

A scent based trademark registration must function to distinguish the claimed goods or services in order to be registered. An applicant cannot register a scent trademark if the product is packaged so that the scent is only apparent to the consumer after it is purchased because the scent itself is not being used as an identifier of trade source for prospective purchasers.

The final requirement is, the scent must be capable of graphic representation. In other words, it must be capable of representation by a written description of both what the scent is and how it is to be used in respect of the claimed goods or services. This ensures that the scent can be depicted on the Trade Marks Register and can be identified by other traders or consumers.

An example of a scent that would not be accepted as a registered trade mark is the scent of an air freshener, as air fresheners cannot have a trademark scent, as that is the primary purpose of those products.

Trademarking scent: The international stage

International Trademarks

 An Australian trade mark provides protection only within Australia. There are two ways Australian trade mark owners can seek trade mark protection overseas:

  • Via an application filed directly to each country, or,
  • Via a single international application filed through the World Intellectual Property Organization (WIPO) nominating the Madrid member countries in which protection is sought.

If you apply directly to another country you need to do that through their systems, and not through IP Australia. You will need to apply to each country separately.

We recommend that you seek advice from an intellectual property (IP) professional before you file overseas.

Whichever option you choose, you will still end up with separate trade mark applications in each country.

Obtaining international trademark protection

A trademark is a word, phrase, symbol, scent or design that identifies the source of goods or services. It can be a word, phrase, symbol or design used in connection with the sale of goods or services to distinguish those sold by one company from those sold by others.

Some examples of trademarks are Nike's swoosh logo and Apple's apple with a bite taken out of it. Trademarks can be registered (which gives rights to use them nationally) or unregistered (which gives no rights beyond your own state).

Trademarks can be very important to businesses because they allow them to distinguish their products from others'. While most people recognize Coca-Cola as being associated with soft drinks made popular by inventor John Pemberton in 1886, if there were another company called Soft Drinks Ltd with exactly the same product then customers would not know who makes what until after they buy it. Trademarks also provide consumers peace of mind knowing that if something is made by one company then it will taste similar everywhere else even if they've never tried it before!

The Madrid System

The Madrid System facilitates the filing of trade mark applications in a number of countries through one application. It is administered by WIPO in Geneva.

All requests for protection in Madrid member countries are examined according to the trade mark legislation and laws existing in the designated countries. You may want to get the advice of an IP attorney professionals who are familiar with the details of each country.

WIPO provides a full list of member countries that an international application can cover.

Conversely, the Madrid System also allows foreign trade mark owners to designate Australia in their international applications. This means that overseas traders could have trade marks similar to yours that are operational in Australia. You should be checking databases to make sure there are no crossovers.

Requirements for international applications

Requirements to apply for an international trademark are:

  • You must have an application and/or a registration in Australia on which to base your application.
  • You must meet entitlement requirements within Australia.
  • The mark on the international application must be identical to that contained on the Australian application/registration.
  • The goods and services in your international application must be covered by the claims in the Australian application/registration.
  • The applicant on the international application must also be the applicant on the Australian application/registration.

International trade mark costs

You can work out the cost of applying for an international trade mark by using the WIPO fee calculator to determine the amount due in Swiss francs. Please note the exact figure in Australian dollars will depend on the conversion rate used on the day your application is submitted.

For more information on fees and the Madrid system please refer to:

  • WIPO: Payment of Fees – Madrid System
  • WIPO: Madrid – The International Trademark System

International trademark protection

If you're interested in obtaining trademark protection in Australia, there are several benefits to consider. For one, Australia is a member of the Madrid Protocol, which simplifies the process of obtaining trademark protection in multiple countries. The Madrid Protocol allows you to file a single application in one country and have the same application accepted in other signatory countries. In other words, if someone else has already registered a similar mark in another jurisdiction (such as another European Union member state), an Australian application will not be accepted unless it qualifies as a different mark or there is no likelihood of confusion between them.

In addition to its membership with so-called "Madrid" agreements that allow for international trademark filing under one centralized registration system, Australia also has bilateral agreements with many nations around the world for simplified registration under their respective systems. These include United Kingdom; France; Germany; Italy; Japan; New Zealand; South Africa and Switzerland among others.

The trademark registration process can seem complicated, but it’s really not. In fact, it’s an important part of protecting your business and making sure people know about it. The more you know about trademarks and how they work, the better off you’ll be when it comes time to filing one for yourself or someone else.

Claiming Priority

If applying for an international trademark within 6 months of lodging of a Domestic Trademark, the international trademark can claim priority and be backdated to the date of the original domestic lodgement.

How long does an international registration last?

Your international registration is protected for a period of 10 years from the date of registration. Registration can be renewed every 10 years upon payment of the relevant fees.

Benefits of the Madrid System

Benefits of the Madrid System include:

  • You can apply for protection of your Australian trade mark registration in its member countries, all in one request.
  • The request is filed in one language (English) and payment is made to WIPO in one currency (Swiss francs)
  • The process can be simpler and cheaper than directly applying to each country, depending on how widely you want to trade.
  • You do not need to have an address for service within the contracting countries at the time of filing.
  • You only need to make a single request to make changes to, or renew, international registrations. If your international registration is granted protection in a designated country, your trade mark will have the same protection that would be extended to a national registration in that country.
  • You are able to make subsequent designations in other Madrid member countries at a later date.

What (scent) has been trademarked overseas?

The rules and requirements in the United States and other countries in relation to trade marks are slightly different to those in Australia. Here are a few examples:

Hasbro Inc - United States

Have a registered scent trademark described as scent of sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.

Used with their toy modelling compounds.

Grendene S. A. - United States 

Have a registered scent trademark with a bubblegum scent.

Which is used for the Shoes, sandals, flip flops, and accessories, namely and flip flop bags they sell to consumers.

Le Vian Corp.

Have registered a chocolate scent trademark.

Which is used with retail store services featuring jewellery, gems, watches, and more.

Who can benefit from trademarking scent?

Many industries can take advantage of using scent to distinguish themselves and the goods and services they provide.

Here are a few types of companies that could benefit from trademarking scent; these include:

  • Hotels (Can use distinctive scents within their lobbies)
  • Car companies (That use distinctive scents in the interior of their cars)
  • Retail companies (That use distinctive scents in their stores)

So, whats the next step?

The trademark process

Interested in trademarks but don't know where to start?

Filing a trademark application in Australia is a straightforward process. The first step is to search for existing trademarks, which can be done on the IP Australia website, to ensure that no one else has registered the same or similar mark as you. Once you have done this, you can begin your application by providing:

  • A description of your Trademark;
  • Your name and contact details;
  • The name and address of the business applying for registration; and
  • A signature from an authorised officer at that company.

As IP agents, Company123 can guide clients through the application process, which involves the following steps:

Step 1: Conduct an analysis on the likelihood of success for your trademark

This is an optional step but is strongly advised to allow for clients to be well-informed before proceeding to application which can be costly.

This process can involves:

Trade Mark Search Report, prepared by our trade mark specialists

A Trade Mark Search Report will outline the likely outcome of your application, highlighting any potential difficulties, problems or potential conflicts.

The search report will also provide advice in regards to appropriate classes, if the text, phrase or logo needs to be changed as all as well as some general trade mark information.

The search report is a great starting point if you are unsure about Trade Marks, as this allows you to see how likely your mark will be registered without paying the full fee.

Search reports are generally delivered with 5 business days and if you are happy with the outcome, you can proceed to the application.

With the option to add an:

Expedited Analysis Report, coordinated by Company123 with IP Australia which allows for both speedy analysis results and a quicker application process afterwards as well. You can read about this system on the IP Australia website.

For further clarification on how Expedition works feel free to call our specialists at 03 9832 0660.

Step 2: Lodging an application

Before submitting an application, there are some simple questions to answer first (when conducting an analysis prior to application, these questions are answered as part of the analysis).

First, what type of trademark are you applying for?

For example, a text or a logo? Each has to be a separate application.  These are the most common types, but there are various specialised and niche types of trademarks, which can be found on the IP Australia website.

Next, what class/classes your trademark should be registered for?

There are 45 different classes, encompassing a wide range of goods and services.

To help you decide what goods or services to list think about the exact nature of your business and ask yourself the following:

  • Where do you derive your business income?
  • What is the nature of your business?
  • What are you known for by your customers/clients?
  • What products or services does your business provide?

IP Australia provides a Trade Mark Assist service that can help further determine what classes are best for your trademark.

To lodge an application through Company123, this form has to be filled out.

Once payment is made, Company 123 as IP agents proceed to lodge the same day, and the Notice of Filing is given by IP Australia within 1 business day.

Step 3: Examination

Once you file your trademark application, it will be reviewed by a trademark examiner to determine if the mark is acceptable.

If it is acceptable, the examiner will publish your trademark application on a public record and send you a notification of publication in the mail. This gives other people an opportunity to object to your registration or request more information from you about your application.

If no one objects, then you can conclude that there were no issues with filing this particular trademark; however, if someone does object and there are grounds for objection (such as if the subject matter of your mark conflicts with another registered mark), then this may result in a refusal letter stating why the examiner cannot accept your application for registration without changes being made first (or at all), which ordinarily takes 4-6 months.

With Expedition, this can be cut down to 1-2 months. (Important to note that although you will receive early acceptance, for official registration every trademark has to wait at least 7 months).

Step 4: Acceptance/Adverse Report

If successful, the trademark will be issued a Letter of Acceptance, and will proceed to Step 5.

If unsuccessful, IP Australia will issue an Adverse Report detailing the issue.

From there, there are often options to overcome the objection.

Sometimes this involves amending the application by limiting the scope, sometimes providing evidence of Prior Use.

Step 5: Advertisement to the Public

During this 2 month period, it is advertised for opposition purposes.

If there is no opposition (which is common), the application will proceed to Step 6.

Step 6: Registration

When a trademark is registered, you will receive a Certificate of Registration and the trademark is valid for 10 years, after which it must be renewed.

In today's global marketplace, it's more important than ever to protect your business. Trademarks help you do this by giving you the exclusive right to use a name or logo for goods and services. This means that if someone else tries to use your trademark without permission, they can be stopped and forced to pay damages.

Company123 are IP agents that can guide you through the application and registration of both Australian and International trademarks.