-- JonathanMo - 14 Sep 2015
This definition enables a company to register as a trade mark a shape or colour, sound or scent (which the earlier laws did not allow). It also allows the registration of an 'aspect of packaging'. Thus it can allow a company to register as a trade mark something that is purely functional in nature, such as a bottle, allowing a company to generate a quasi-monopoly over a functional item in certain areas of trade activity. Hence Coca-Cola has been able to register the shape of its bottle as a trade mark in Australia under the TMA (which it could not do in the UK under the UK trade mark law). See Coca-Cola Trade Marks [1986] RPC 421. See also Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107; 47 IPR 481 (Full Federal Court), in which Coca-Cola protected the shapes of its trade mark bottle against a confectioner producing sweets in the shape of the Coke bottle. See also Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2001] FCA 1047; (2001) 52 IPR 137. However, the extensions under the TMA are still subject to the limitations established by the case law as to registrability (see below); in particular that the mark or sign must be used to distinguish goods or services rather than being the goods or services themselves.
What is a trade mark/trade sign?
The TMA defines a trade mark 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. Section 6 of the TMA states:
'Sign' may 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.
This definition enables a company to register as a trade mark a shape or colour, sound or scent (which the earlier laws did not allow). It also allows the registration of an 'aspect of packaging'. Thus it can allow a company to register as a trade mark something that is purely functional in nature, such as a bottle, allowing a company to generate a quasi-monopoly over a functional item in certain areas of trade activity. Hence Coca-Cola has been able to register the shape of its bottle as a trade mark in Australia under the TMA (which it could not do in the UK under the UK trade mark law). See Coca-Cola Trade Marks [1986] RPC 421. See also Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107; 47 IPR 481 (Full Federal Court), in which Coca-Cola protected the shapes of its trade mark bottle against a confectioner producing sweets in the shape of the Coke bottle. See also Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2001] FCA 1047; (2001) 52 IPR 137. However, the extensions under the TMA are still subject to the limitations established by the case law as to registrability (see below); in particular that the mark or sign must be used to distinguish goods or services rather than being the goods or services themselves.
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