21.2. Representing non-traditional signs

• It is a requirement of the legislation that a trade mark be represented graphically (section 40).

• The representations must clearly demonstrate the nature of the mark, and show each feature clearly enough to permit proper examination (subregulation 4.3(8)).

• In particular, where the trade mark contains or consists of a sign that is a colour, scent, shape, sound or an aspect of packaging, or any combination of those features, the application for registration must include a concise and accurate description of the trade mark (subregulation 4.3(7)).

• The description is entered as an endorsement on the registration and is a key part of the identity of the mark.

It is clear from the regulations that these kinds of signs need both pictorial representations of the trade mark where possible, and a clear description before the scope of the application is properly defined and effective examination can take place. The requirements for pictorial representations of each kind of mark, where relevant, will be dealt with later in the Part in the specific paragraphs discussing each individual kind of sign.

2.1  Description endorsement

All these kinds of signs require a description which helps make clear what is being claimed as a trade mark.  Ideally, the description of the trade mark should appear on the application when filed.  There should be no discrepancy between the description and the required graphical representations and the relationship between them should be spelled out, for example by including a cross reference to the representation in the description. It is the combination of description and representation(s) that forms the mark.

Without a clear description of the trade mark claimed, it may be difficult to research it for section 41 purposes.  It may also be difficult to search the database for any conflicting trade marks on the Register. Any lack of clarity will make it difficult if an application proceeds to acceptance and potential opponents are unable to identify its scope in preparation for deciding whether to oppose, or not. The description is thus very important in helping to understand the exact nature of the trade mark claim.  Examples of appropriate descriptions for the various kinds of signs are included in the specific sections of the Part referring to those signs.

2.2 Amendments to descriptions

It is important to note that the description is an integral part of the representation of the trade mark and any amendments made to it will affect the trade mark.  If the applicant puts forward a proposal to amend the description that would change the identity of the trade mark, this is unlikely to be acceptable under the Act.  When a description is supplied after filing, care must be taken to ensure the description can, in combination with the representation(s), sufficiently identify the trade mark for examination purposes. After amendment, the resulting combination of description and representation should not include differences that would affect the identity of the trade mark as originally filed.

Any amendments that do not meet the requirements of the Act in this way could be the basis of objection at opposition or in the Courts. This means that inappropriate amendments can add the sort of vulnerability to the registrability of a mark which is not only outside what is allowable under the Act, but also outside what is in the interests of the applicant.
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2.3 Amending descriptions to accord with the representations on file

On occasions, an applicant may claim the trade mark as a shape or colour mark, but the representations filed also include words and/or other material. In many of these cases, while the shape/colour on its own might not be capable of distinguishing, the combination of the shape/colour and the additional material will form a trade mark with sufficient adaptation for prima facie acceptance.  In these cases, it may be appropriate for the applicant to amend the description to clearly refer to all the individual elements in a way which leaves no doubt that it is the combination being claimed that is registrable - not its independent parts.

If the description is broad, vague or absent, a change of this nature does not necessarily extend the applicant's rights but will still need to be considered carefully. If, however, there is a description which already clearly specifies the scope of the trade mark, it is not possible to extend the claim to include items not in the existing description.  

An example is an application which consists of the representation of a building, with words on the fascia and the windows, all surrounded by yellow and blue coloured neon lights.  The applicant has provided a trade mark description which reads “blue neon light on a yellow background”. The scope of the trade mark claim is therefore restricted by this reference.  Any specific change to include the words appearing on the building is likely to be outside the scope of the trade mark claim, and therefore not allowable.