We’ve all heard of the famous case between Cadbury Schweppes PTY LTD and Darrell Lea Chocolate Shops PTY LTD and the long running battle to claim the rights to the colour Purple.
This could have been averted by a simple registered trade mark by Cadbury in the beginning. The size of your business does not matter. Anyone can take your ideas and use them. It costs more to go to court to fight the case than it does to register the trade mark from the start.
Think about what makes your business unique? There are so many examples of businesses that we know and love that have trademarked their brand to protect themselves from copycats that want to take their ideas and use them.
You can register a trade mark for many aspects of your business from a façade, fit out, colour and a tag line. I wanted to know about this area of the law and how it applied to retail business so I sat down with Sharon Givoni from Sharon Givoni Consulting who specialise in Intellectual Property. I’m sure that once you have finished reading, you may want to call a lawyer yourself to see if you can protect some special aspects of your brand that you may not have thought of.
Please tell me a little about your background before embarking on your private law firm?
I worked for a range of top tier law firms and in particular I enjoyed working with smaller clients as well as larger clients. Which is what instigated me to start my own law firm, which I did in the year 2000.
What inspired you to focus on commercial law and intellectual property?
In my view, those are very creative areas of the law, and I am a very creative person. I am also a shopaholic and I like to work with brands and am interested to see what new brands are out in the market place.
I think that commercial and intellectual property laws are challenging because they are constantly changing and developing, and that’s what I like best about the area.
Please tell me a little more about protecting your intellectual property by using a trade mark and examples of what can be trademarked?
My tag line is “turn your ideas into assets”, and I believe that in my law practice I work with clients to do just that. I work very closely with clients to unravel and unwrap the value of all of their brands and then we go on to protect them as registered trade marks, where possible.
Areas that we come up with the most as well brands include confidential information, copyright law and designs.
One thing that clients are surprised to hear is that ideas and concepts cannot be protected in their own right.
Trade marks …
In terms of what can be trademarked, this is a fabulous area, and even in the retail world there have been a lot of recent developments that have been exciting, one of those being non-traditional trade marks.
There are trade marks that we are most familiar with: brands that consist of names and logos, and then there are what’s known as non-traditional trade marks. These are brands that use all of the senses or engage senses other than just eyesight for. There are smell trade marks, there are sound trade marks, aspects of packaging trade marks and even colour marks.
Examples in the retail world are the hounds tooth pattern, which is a trade mark associated with David Jones; you could argue that if you saw the hounds tooth pattern on a Myer shopping bag you could be confused into thinking, ‘Have Myer partnered with David Jones?’
Such is the power of a pattern!
Trade mark is a badge of origin, and sometimes a pattern can evoke a particular thought or brand in particular. The Burberry pattern is trade mark. Even a red tab which is associated with Levi’s is a trade mark of Levi jeans. No other company would want to use a red tab because that would be a trade mark infringement of the Levi’s trade mark.
What I’m painting a picture of is a trade mark giving you a very large monopoly, and, in fact, this monopoly cannot be underestimated. Small business owners mistakenly believe that business names, company names and domain names give them some form of ownership over the brand that is a not so, it is a pure myth. The only way you can get ownership over your brand is to register a trade mark.
Trade mark registration in Australia lasts 10 years, and is potentially renewable. For example, the Bonds’ trade mark have been registered since the very first day that the trade mark office opened, which was all the way back in 1906 and Bonds have been clever enough to renew that trade mark every 10 years. That is one of many. The Shell Pecten emblem is another logo to be registered for many years, as is the Shell.
The Rosella parrot is yet another example and the list goes on.
I hear there are some retailers trademarking the fit out of their retail premises, can you tell me a little more about this?
This is a really hot area at the moment.
You may have read recently that the Apple store has trademarked all layouts of their stores and we all of know of these stores as glassy and glossy. Blue t-shirts and handy iPads immediately come to mind. There is a trade mark in the US for the design and layout for the Apple store Apple trade mark application.
Another one is Eagle Boys pizza. Anyone who goes to Surfers Paradise, when they see that familiar hot pink glow in the distance – the sight of the lights alone can make you hungry as it represents Eagle Boys pizza.
It has registered its facade trade mark in Australia. The trade mark consists, according to the trade marks register“ a pink glow created by a row of pink coloured lights, extending along a fascia of a building, or, a pink glow created by pink lights mounted on the exterior or interior walls of a building, within which the specified services are provided”.
The point I am making is, if you are a pizza shop with a façade that is similar to Eagle boys pizza you could find yourself in trouble, legally speaking, because they own the trade mark.
It makes sense because someone could pull up to a pizza shop with pink lights thinking it was Eagle Boys, and being quite mistaken as to where the pizza really comes from. So, as you can see, it is a really rife area that is yet to be explored.
Lets look at Tag Lines in Business – can these be trademarked as well? For example, ”there’s no other store”?
There are many people that are doing that, and there are many people that have not yet caught on. Yes you can. The simple reason is that the tag line or a slogan can actually act as a brand in its own right.
Take the following brands, and this will convince you; Just Do It, Which Bank, We’ll look after you, The fresh food people, Finger lickin’ good, My Store, Lowest prices are just the beginning and Let your fingers do the Walking. I bet you at least got some of those right, and you know which brand they relate to. (Me, all of them right.)
You mentioned David Jones. They have one as well. Theirs is, there is no other store, and when you read it or hear it you’ll hum in your head, like David Jones. It’s a very important to register tag lines, and then you can actually use the R in a circle symbol next to the tag line to act as a ‘back off’ symbol so that nobody rips you off, and people understand that you have ownership rights in those words.
What are the consequences of not trademarking?
Consequences of not trademarking your brand can be quite serious. Trade marks in Australia are granted on a first-come, first-served basis. What this means, really is that it’s a race to the Trade Marks Office to see who gets in first.
If you have thought of a great tagline or brand name and have not registered it and someone else applies or files an application before you, then when you go to file, the trade marks office will stop you and site theirs, thus preventing yours from being accepted.
Sometimes this is not insurmountable, though you will be spending a lot in legal fees going around it and without any guaranteed chance of success.
The other problem with not trademarking is that you have to rely on common law rights, which revolves around proving a reputation, and people are misled, which can be a real problem.
How easy is it?
I say, as a lawyer, to just do the trade mark, and then if someone copies my clients brand all I need to do is actually site a seven digit trade mark number and the rest really speaks for itself.
Can you please give me a few more examples of non- traditional trade marks?
We have already discussed briefly the store fit-out or façade of the store, which would count as something we have never traditionally thought of as a trade mark. In today’s cluttered world many things can act as trade marks.
An example is the colour silver. When you are shopping in a hurry and you’re in the cream cheese section of the supermarket, think about this: what colour does silver represent in the cream cheese category? (If you said Philadelphia you were right.) Having shown the Trade Marks Office a lot of evidence of use, Philadelphia was able to successfully obtain a trade mark registration specifically for cream cheese which was an enormous monopoly.
Another example would be this: take the idea of a purple block of chocolate. What colour comes to mind? (Cadbury) In fact, it’s taken it ten years, and it has finally been able to register purple for block chocolate. (A little caveat, that’s several pantone specific shades, so it’s not every single shade of purple.)
Speaking of purple, when you have a cat and you see a pinkish-purple colour overwhelming you in the cat food isle, you will know it as Whiskers. Mars Incorporated trademarked this colour for pet food.
The last word: When you are looking at setting up a business, this is an aspect that you must look at in the planning stage by using a lawyer who can make you aware of the requirements of what you can or can’t do.
It’s best to develop a strategy early on and get it right. For example, there are various cheesy products, like Twisties and Cheesy Twist that are all in similar colour tones, usually yellow and red. What that is saying, is that no one can protect those colours because they have become generic.
If the colour used is unique like the purple Cadbury block of chocolate, Milka has lilac, Verve Cliquot has registered a very distinctive shade of orange, and not to mention Tiffany’s blue. They have all thought about their branding from the outset and strategically used the colours, so the likelihood of registration is going to be much higher.
What I like to say is, “capture it and turn it into a form of an asset” by doing little tricks that aren’t overly expensive in the scheme of things. You could trade mark registration, use copyright symbols, put notices on your website reminding people that these are trademarks that are owned by someone and a raft of other things.
Cadbury Photograph’s courtesy of photographer Simon Watts
Take away tips:
- Trade marks granted on a first come first served basis (file soon).
- Get searches before you use a mark so that you reduce the risk that you infringe someone else’s trade mark.
- Remember that you can register other types of trade marks such as colours, shapes and sounds think broadly.
- In the retail world taglines have a crucial value … ensure that you protect yours as the last thing you want to do is see someone copy without being able to do anything about it.