When thinking about what a trade mark is, besides being the symbol that links the goods and services with a particular business (i.e. badge of origin), most people will think of either a word/term or a logo. However, as outlined in the Trade Marks Act 1995 (Cth), Australia allows for colours, sounds, scents and even shapes to act and be registered as trade marks. Shape trade marks allow businesses to develop unique and distinctive products and packaging, which should be considered as part of its intellectual property strategy and portfolio.
Copyright and Design Overlap
The shape/configuration of a product sits at the intersection of a number of intellectual property regimes. For protection of unique and novel shapes of products, traditionally, businesses rely on the protections afforded by a design registration or potentially under copyright as a work of art, including copyright that may exist or be embodied within a three-dimensional shape or configuration. The benefit in protection under copyright is that it automatically arises in Australia, as long as the relevant criteria are satisfied – businesses do not need to go out of their way to register it like other forms of IP. Additionally, copyright law affords a very substantial period of protection.
However, Australian law has addressed the overlap between copyright and designs, and seeks to prevent dual protection, particularly in relation to commercialised/mass-produced products. For example, once a design is registered, or once the copyright has been industrially applied (generally speaking, more than 50 articles), copyright protection is likely lost. As a result, businesses that fail to consider design registration early may lose copyright protection through commercialisation, and subsequently lose the ability to seek designs protection.
Shape Trade Mark Registration
Shape trade marks are recognised in Australia and provide an avenue for a longer-term protection strategy for unique and distinctive product configurations and packaging. It is important to note that in doing so the shape must operate to distinguish the goods or packaging of a business from those of other traders. In other words, the shape must act “as a badge of origin”.
Shape Trade Marks as a “Badge of Origin”
As shapes of products and packaging often serve a functional purpose and not an indicator of trade origin, any application for registration of a shape trade mark must be able to demonstrate that the relevant shape is capable of distinguishing the business’ goods or packaging from those of other traders. The more unique and less common the particular shape is to that trade, the more likely it may act as a badge of origin. If, on the other hand, the particular shape serves a predominantly functional role, then it is more likely that other traders will need to use that shape in relation to the same/similar goods. In this regard, no one trader should be allowed to monopolise a generic shape to the exclusion of all other traders.
Examples of Shape Trade Marks
One of the most famous examples of a shape trade mark is the unique contoured shape of The Coca-Cola Company’s bottles, iconic in that consumers would be able to recognise without any labelling by The Coca-Cola Company.
Another well-known example is the triangular segments of a Toblerone chocolate, which are instantly recognisable and have become synonymous with the brand. The particular shape chosen is only seen in this confectionary, and does not serve a functional purpose in that trade, where, traditionally, chocolates are sold in a rectangular block.
Key Takeaways
- Timing is critical. Commercialising a product without considering registration early can result in the loss of certain protections and limit future IP protection options.
- Think beyond design registration. Shape trade marks can offer a longer-term protection strategy for distinctive products and packaging, potentially complementing other forms of IP protection.
- Functionality can be a barrier. Shapes that serve a primarily functional or common purpose are less likely to qualify for trade mark protection, as competitors must be free to use them.
- Consider shape protection as part of your IP strategy. Identifying distinctive product configurations and packaging early can help businesses build a stronger, more comprehensive IP portfolio.
Successful registration of a shape trade mark will depend on its uniqueness in the relevant trade and establishing that the shape acts as a badge of origin, as opposed to serving a merely functional role. However, businesses should give serious consideration to seeking protection of any shape trade marks they use or intend to use, as these can form an important part of a business’ intellectual property portfolio, particularly where there may be limited or no protection available under copyright or as a registered design.
If you have questions regarding trade mark protection options in Australia or internationally, please reach out to MBIP on 07 3369 2226 or via mail@mbip.com.au.
