10.3. Representation of the Trade Mark - General

Date Published

Under the terms of paragraph 27(3)(a) of the Act, of the Act, the application must include a representation of the trade mark. Additionally, in the case of a trade mark that consists of or contains a sign that is a colour, scent, shape, sound, aspect of packaging or other kind of non-traditional sign, the application must include a concise and accurate description of the trade mark (subreg 4.3(7)).

 

3.1  A graphical representation is required

As a trade mark must be able to be represented graphically to be registrable (section 40) the Registrar will, as a matter of practice, require that the representation of the trade mark that is included in the application be a graphical representation. In the case of sound trade marks, recordings of the sound (e.g. compact disc or digital sound file) will also be required. An actual sample of the trade mark may be required for three dimensional shape trade marks. Each trade mark consisting of, or containing, a colour, scent, shape, sound, aspect of packaging or other non-traditional sign must also be accompanied by a concise and accurate description of the trade mark. Such descriptions will be entered as endorsements and, taken together with the graphical representation, will help to define the scope of the registration. The onus remains with the applicant to provide a suitable representation of the trade mark.

 

3.1.1

The size of the representation of the trade mark should, where practicable, be no larger than 8cm x 8cm (subreg 4.3(1)).

 

3.1.2

Where a series of trade marks is applied for and the representations of the trade mark are together more than 8cm x 8cm then the representation of each trade mark in the series should, where practicable, be no larger than 8cm x 8cm and must be attached to the application (subregs 4.3(2) and 4.3(9))

 

3.1.3

Oversized representations must be attached to the application (subreg 4.3(9)).

 

3.1.4

The representation must:

  • show all the features of the trade mark clearly,
  • be of a quality that ensures all the features of the trade mark will be preserved over time, and
  • be suitable for reproduction (subreg 4.3(10)).

 

3.2  Shape (3-dimensional) trade marks

3.2.1

The applicant must state on the application form that the application is for a shape trade mark. If this is not stated but it is fairly clear, eg because the trade mark has been depicted in a three-dimensional (3-D) perspective drawing, then the examiner should query whether or not the trade mark is in fact a shape trade mark.

 

3.2.2

The representation of a shape trade mark or a trade mark containing a shape should, where practicable, be in the form of a perspective or isometric drawing that clearly shows all the features of the trade mark (subreg 4.3(3)(a)). The parts of the configuration claimed to constitute the trade mark should be shown in solid lines, while the unclaimed parts, if any, should be shown in broken lines. The representation must be accompanied by a concise and accurate description of the trade mark (subreg 4.3(7)). This description will be entered as an endorsement of the registration and will thereby serve to define the scope of the registration. There should be no discrepancy between the representation and the description. In most cases the features of the mark should be clear from the representation and the description serves to make clear exactly what is being claimed as the trade mark.

 

3.2.3

If it is not possible for the applicant to provide a perspective or isometric drawing of the trade mark, the applicant should furnish as many views of the trade mark as will sufficiently show all the features of the trade mark (subreg 4.3(3)(b)).

 

3.2.4

Where more than one view of the trade mark is filed, each representation of the trade mark should, where practicable, be no larger than 8cm x 8cm and must be attached to the application (subregs 4.3(1) and 4.3(9)).

 

3.2.5

If the representation of the trade mark provided by the applicant does not show clearly all the features of the trade mark, the Registrar may require up to 6 further views of the trade mark (subreg 4.3(4)).

 

3.2.6

If the description or representation of the trade mark is not satisfactory in that it does not demonstrate the nature of the trade mark sufficiently or show each feature of the trade mark sufficiently, the applicant may be requested to provide a description or further description of the trade mark and a specimen of the trade mark (subreg 4.3(8)). If the description is suitable it will be entered as an endorsement of the registration. The onus lies with the applicant to provide an adequate graphical representation of their trade mark - if they cannot then the application must be rejected.

 

3.2.7

Black and white or colour photographs of shape trade marks which have been mounted or printed on good quality A4 size paper will be acceptable as representations of the trade mark. They must, however, be able to be reproduced for the purposes of publication.

 

3.2.8

Trade marks consisting of or containing a shape will be indexed as the kind of sign “shape” and therefore, all shape trade marks will come up on a search of the “shape” kinds of signs. Where a trade mark contains or consists of a non-traditional sign this will also be identified on the first screen in the enquiries facility.

 

3.3  Sound trade marks

3.3.1

The applicant should state on their application that the trade mark is a sound trade mark.

 

3.3.2

Trade marks consisting of or containing a sound will be indexed as the kind of sign “sound” and therefore all sound trade marks will come up on a search of the “sound” kinds of signs. Where a trade mark contains or consists of a non-traditional sign this will also be identified on the first screen in the enquiries facility.

 

3.3.3

The onus lies with the applicant to ensure that the trade mark is adequately represented. A graphical representation of the trade mark is required, and also a concise and accurate description of the trade mark (subreg 4.3(7)). In some cases the description and the graphical representation will be the same if there is no other form of graphical representation. The description will be entered as an endorsement of the registration and will thereby help define the scope of the registration. The representation of the trade mark may consist of a written description of sounds if the sign is not a musical-type sound. For example the graphical representation of the trade mark might be the words “CLIP, CLOP, MOO” and a concise and accurate description of the trade mark might be along the lines “The trade mark consists of the sound of a cow taking two steps on pavement, followed by the sound of a cow mooing as recorded on the compact disc accompanying the application form”. A sign consisting of a musical sound might be most appropriately represented in the form of musical notation, however, this will depend on the trade mark. An example of a representation of a musical sign may be that the trade mark will be represented graphically by the score of the tune and the description will be along the lines “The trade mark consists of the tune represented on the application form played on a trombone as recorded on the compact disc accompanying the application form”.

 

3.3.4

In most cases the applicant will need to file a copy of the actual sound being claimed as the trade mark.  This copy should be provided on a medium which allows for easy copying, storage and replaying of the sound.  CDs, DVDs and digital sound files are all suitable media.  

If it is not possible to provide the actual sound at the time of filing, for example, when the applicant experiences difficulties in attaching a sound file to an electronically filed application, the medium incorporating the sound should be sent to the Office as soon as possible after the application is filed.

 

3.3.5

If the description or representation of the trade mark is not satisfactory in that it does not demonstrate the nature of the trade mark sufficiently or show each feature of the trade mark sufficiently, the applicant may be requested to provide a description or further description of the trade mark and a specimen of the trade mark (subreg 4.3(8)).

 

3.4  Scent trade marks

3.4.1

The applicant should state on their application that the trade mark is a scent trade mark.

 

3.4.2

Trade marks consisting of or containing a scent will be indexed as the kind of sign “scent” and therefore, all scent trade marks will come up on a search of the “scent” kinds of sign. Where a trade mark contains or consists of a non-traditional sign this will also be identified on the first screen in the enquiries facility.

 

3.4.3

The onus lies with the applicant to ensure that the trade mark is adequately represented. The application must include a graphical representation of the trade mark (eg. “the scent of apple blossoms”) as well as a concise and accurate description of the trade mark (eg. “The scent of apple blossoms applied to car tyres”). In some cases the description may also be used as the representation where there is no other form of graphic representation. The description will be entered as an endorsement of the application (subreg 4.3(7)) and will thereby help to define the scope of the registration. A precise word description of the trade mark would be a satisfactory representation of a scent trade mark, however the results of analytical techniques would not be as they would not be readily understood by the ordinary person searching the Register.

 

3.4.4

If the description or representation of the trade mark is not satisfactory in that it does not demonstrate the nature of the trade mark sufficiently or show each feature of the trade mark sufficiently, the applicant may be requested to provide a description or further description of the trade mark (subreg 4.3(8)).  The office does not usually request a specimen of the scent, but it would be acceptable in these circumstances to request an example of the scent in use on the goods claimed.

 

3.5  Colour trade marks

3.5.1

If the applicant is claiming colour, or a combination of colours, as applied to the goods or their packaging or as used in relation to their services, as a trade mark, they should claim this by identifying the trade mark as a colour trade mark on the application form. As well as supplying an example of the colour itself, the applicant must provide a concise and accurate description of the trade mark on the application (subreg 4.3(7)). The description, which should state precisely what the mark consists of and how the colour is to be used as a trade mark, will be entered as an endorsement of the registration and will thereby help define the scope of the registration.

An example of a suitable form of description for a trade mark which consists of a combination of colours applied to a pharmaceutical capsule would be:

The trade mark consists of a maroon colour applied to one half of a capsule at one end, and a gold colour applied to the other half, as illustrated in the representation on the application.

 

3.5.2

If the description or representation of the trade mark is not satisfactory in that it does not demonstrate the nature of the trade mark sufficiently or show each feature of the trade mark sufficiently, the applicant may be requested to provide a description or further description of the trade mark and a specimen of the trade mark (subreg 4.3(8)).

 

3.5.3

Trade marks represented in colour/colours.  If a trade mark does not consist of a colour or colours but is simply a trade mark which is always used in particular colours, a different form of endorsement would be required.

This situation is most likely to occur when a trade mark which is lacking in inherent adaptation to distinguish is shown through evidence of use to be capable of distinguishing when used in particular colours. Acceptance for registration may then be allowed on the basis of a limitation to colour. This endorsement will be as follows:

Registration of this trade mark is limited to the colours ____________, ________ and _________ as shown in the representation of the trade mark attached to the application form.

If an applicant chooses to limit to colour during examination, this same form of endorsement would be the appropriate one.  

Occasionally an applicant will include a description of the trade mark and its colours at the time of filing. In those cases, the following descriptions will be taken as an indication of a restriction or limitation to a specific colour or colours:

  1. “The trade mark is restricted to the colours green and blue as shown in the representation attached to the application form.”
  2. “The trade mark is limited to the colours green and blue as shown in the representation attached to the application form.”
  3. “The colours green and blue are claimed as a distinctive feature of the trade mark as shown in the representation attached to the application form.”
  4. “The applicant claims the colours green and blue as a distinctive feature of the trade mark”.
  5. “The colours green and blue are a distinctive feature of the trade mark”.
  6. “Colour claimed as a distinctive feature: green and blue”.
  7. “Colour claimed: green and blue.”
  8.  “The applicant claims the colours green and blue as an essential feature of the trade mark.”

It should be noted that this does not imply a claim to rights in the colour or colours themselves, but is a limitation on the rights of registration under section 70 of the Act.  See also the note at the end of paragraph 4.1 of Part 21 in respect of colour endorsements.

In some situations, the applicant's description included at filing will not be considered as a restriction or limitation to colour. The following are examples of such descriptions:

  1. “The trade mark is depicted in the colours green and blue as shown in the representation attached to the application form.”
  2. “The trade mark is presented in the colours green and blue as shown in the representation attached to the application form.”
  3. “The trade mark is represented in the colours green and blue.”

While not affecting the trade mark in any way, it is acceptable to leave these descriptions as entered in accordance with the applicant's wishes.

Only if the description is unclear should it be queried.

 

3.6  Moving Images, holograms and gestures

3.6.1

The applicant should state on their application whether the sign they are claiming as a trade mark is a moving image, hologram or gesture.

These applications will be indexed according to their content.  For example, a moving image which consists of a three dimensional animal performing certain actions will be indexed as “shape” as well as the description of the animal.  A moving image which consists of a two dimensional animal performing actions will not be indexed as a shape but as the animal only.

 

3.6.2

The applicant must include a clear description of the sign which is the subject of the application.  This description must be precise and clearly identify exactly what the trade mark consists of.

The description of a hologram must clearly describe each view formed by the hologram when it is moved about.  Representations of each view must also be provided.  

The description of a gesture claimed as a trade mark must also precisely describe the gesture.

 

3.6.3

Although it is theoretically possible for a written description by itself to sufficiently describe these kinds of signs, it is unlikely that this will often be the case.  For each of these signs, the applicant should expect to have to provide a copy of the actual trade mark, in the form of a video clip for a movement mark or gesture, or an actual example of a hologram.  Alternatively, the applicant could provide sufficient still representations of the movement or gesture to demonstrate the full range of the claimed movement.  At the time of examination, the examiner may need to request additional information from the applicant in order to clearly define the scope of the trade mark, keeping in mind the requirements of section 65.

 

3.7  Other kinds of non-traditional signs

Overseas jurisdictions have received applications for tastes and textures as trade marks.  These kinds of applications must meet the same requirements as any other trade mark application.  They will be indexed according to the content of their descriptions.

 

3.7.1

If the applicant is claiming a texture as a trade mark, this must be made clear on the application form.  An example of the actual texture claimed must be provided as well as a clear description of the texture and how it is to be used as a trade mark.

 

3.7.2

If the applicant is claiming a taste or flavour as a trade mark, an actual example will not be required.  As with scent trade marks, the applicant will need to provide a clear description that identifies the taste in terms which are easily understood by the average buyer, and which describe how the taste is to be used as a trade mark.

Amended Reasons

Amended Reason Date Amended

Terminology updated to reflect legislative changes.

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