Thinking outside the square in Trade Marks

Did you know that the orange colour of the Veuve Cliquot bottle is an internationally registered trade mark as is the shape of Vans sneakers? LYNDA SLAVINSKIS

By Lynda Slavinskis

Did you know that the orange colour of the Veuve Cliquot bottle is an internationally registered trade mark as is the Tiffany & Co blue jewellery box and the shape of Vans sneakers?

When considering trade marking for your goods and services, don’t forget that what makes your product distinguishable from the others could be the shape, the packaging or the colour.

To be able to obtain a shape trade mark, your shape needs to be more than functional. For example the Tiffany box as a box would not have secured registration but as a pale blue, square shaped box with the words “Tiffany & Co” inscribed on the lid in black writing, this brought the shape beyond functional.

There are other criteria that you will need to satisfy to obtain a shape or colour registration, namely that the shape or colour must be used as a trade mark in its own right.

For example, in the famous Cadbury case Cadbury failed to obtain registration for the purple colour for all of its products because the colour was not used extensively enough as a trade mark in its own right. It was always accompanied by the Cadbury logo.

Also, the colour purple in the chocolate industry could remind consumers of Milka, Violet Crumble, Darrel Lea and other brands as well as Cadbury. The colour has become generic in the industry.

You need to be able to recognise the goods and services from the shape alone. Toblerone have done a great job of this with the ads showing faces with a triangle sticking out of their cheeks. We know it is Toblerone even without seeing the name.

Other shapes that have been registered are the coke bottle, the Louis Vuitton hand bag buckles and the Oroton handbag buckles. Even the Dorothy the Dinosaur children’s cap in the Wiggles merchandising range is a registered trade mark.

If you think about the Louis Vuitton rip offs so popular in the Hong Kong Flea markets, even the most untrained eye can see that they are not originals because apart from the $10 price tag compared to $3,000 for the original, the buckles upon close inspection will be different as will the “LV” logo.

Considering shape trade mark registration in addition to a name or logo registration, especially when moving into international markets, affords you the ultimate protection.

Lynda Slavinskis is an outgoing, intuitive and commercially savvy lawyer. She has worked in-house at Sussan Corporation and Tattersall’s and now assists small and medium businesses with import, export, leases, franchising, employment and general business advice as principal solicitor of Lynda Slavinskis Lawyers & Consultants. Lynda is on the Victorian State Government’s Small Business Advisory Council.

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