What is a Trademark?

What is a Trademark?

trademarks for businessWhen talking about trademarks, there are two categories.

  1. Registered trade marks and
  2. Unregistered trade marks.

Please see our videos “What is the difference between a registered and unregistered trade mark”, “Why should I register my trade mark?” and “Can I enforce my unregistered trade mark?” for more information on the difference between registered and unregistered trade marks.

registered trademarksTrademark Which Can Be Registered.

The most well known types of trademarks are words or logos. For example the word “Apple” for computers and electronic goods or the “Apple logo”. The word and the logo are two separate trademarks.  Our firm also has two separate trade marks, our name, Acacia Law, and our logo.

Trade marks distinguish the goods or services of one business from those of any other. A trade mark has also been called a “badge of origin”. A trade mark is basically anything that tells customers that the goods or services are, for example, an Apple product and not a Samsung product.

If you have your trade mark registered, you can prevent others from using the same or similar mark on the same or similar goods/services. (See our videos on the benefits of registering and pitfalls of not registering your trade mark).

Three Dimensional Shape Trademarks

Other types of trade marks that can be registered are three-dimensional shapes. For example, the triangular chocolate shape is registered in Australia and New Zealand for chocolate.  Three dimensional trade marks can be difficult to register. Shapes which are considered to be “purely functional” cannot be registered as a trade mark, such as this bottle shape.  However, the bottle shape might be registerable, if a distinctive word or label was added. But then the trade mark protection would be for the combination of the shape and word, not for the bottle alone.

Also, the famous Guylian chocolate sea-shell shapes  were not allowed to be registered as a trade mark for chocolates in Australia because, the court said that these are shapes which “occur in nature” and should not be monopolised by any one trader, even though other traders had not sold sea-shell shaped chocolates at that time.

Smell As Trademarks

A smell can be registered as a trade mark. For example, in New Zealand, someone has registered the “smell of freshly cut grass” as a trade mark … but smell marks are rare.

Sounds As Trademarks

Sounds can also be registered as trademarks. One of the most famous is the Microsoft jingle that can be heard when boot up their computer into the Microsoft operating system.

Colours As Trademark

Theoretically, a colour can also be registered, but that would be very rare as well. The chocolate manufacturer, Cadburys, spent years and much money trying, unsuccessfully, to register the colour purple as a trade mark for chocolate.

Business Name and Logo

Most businesses will want to register a name or word trade mark and possibly a logo.  Please see our video on “How to choose a trade mark” for tips on selecting your brand name.  When having a logo designed, please be aware that depending on your agreement with the artist, or depending on the Copyright law that applies at the time, in some situations, the artist (whether or not you pay them) might own copyright in the logo that they design for you. If they do own copyright, they can prevent you from modifying the logo or from registering it as a trade mark. To avoid this potential disaster, be sure to have a written agreement with the artist that you own the copyright. This can be a simple agreement, such as;

I [insert artist’s name] acknowledge that copyright in the logo to be designed for [insert name] belongs to [insert name]. If I, as the artist, owned copyright in the logo at any stage, I hereby assign such copyright to [insert name] for the sum of $1, which I agree is a fair sum and which has been paid to me”.

The artist must SIGN and DATE the document. Keep this in a safe place! This must be signed before the artist begins work.

Tips For Those On A Limited Budget

  1. Many universities or even schools will have graphic design students who would love to design a logo for you at a very reasonable rate, just to get some experience for their portfolios.
  2. If you only have a budget sufficient to register one trade mark, many people make the mistake of registering your logo and word mark combined. This actually limits your trade mark protection! You can then only stop someone using a trade mark similar to the combination of your name and logo. It is better to register your name as a trade mark and rely on copyright (if any) in your logo. Of course, the best option is to register both the name and the logo separately as two different trade marks. That gives you the broadest protection.

If you have any problems selecting a trade mark or with an agreement with your artist or designer, why not email the friendly folks at Acacia Law on tm@acacialaw.com

For our telephone numbers or for more information on trademarks, patents, copyright or other intellectual property law topics, please contact Acacia Law

Mark Warburton About the author

The Intellectual Property Guru. His determination to protect innovation stems from a family legacy in which his grandfather, a genius inventor, had his innovations stolen and patented by someone he trusted, which led to his grandfather dying a pauper on a park bench. Mark is an international award winning lawyer and patent attorney and 3-time published author. His prowess in the court room sees him winning cases that others thought were unwinnable. Mark’s passion for protecting intellectual property shines through in his pro-bono legal mentoring, proactive legal workshops and 1-2-1 work with clients.