Cadbury has protected its various shades of distinctive purple as a trade mark for some chocolate packaging
The strongest form of legal protection you can have for your brand in Australia is by registering it as a trade mark.
While trade mark registration is not compulsory, it can enable you to stop third parties from using “deceptively similar” or “substantially identical” names in relation to the goods or services for which you have registered your mark.
If you have not obtained a trade mark registration, to protect your brand from “copycats” you will generally need to rely upon what is known as the law of “passing off” or proving misleading and deceptive conduct.
This generally requires you to demonstrate that you have a reputation in the brand and the use of the brand by someone else is likely to cause deception or confusion. This can be a costly and time-consuming process.
Having a trade mark registration also means that you can display the symbol ® beside the brand and this can deter others from copying it for their own confectionery product or similar products.
Business name and company name registration
It might be the case the brand name that you choose is also registered as a company or business name. For example, the word “Cadbury” is registered as a business name in various States in Australia and also part of a range of company names (such as Cadbury Australia Pty Ltd and Cadbury Pty Ltd (as at 13 November 2021).
It is important to realise that business name and company name registration are essentially administrative in nature. It is a legal requirement to register the business name that you are trading under, so that people can identify who is carrying on the business. Australia-wide company names, which are administered by the Australian Securities and Investments Commission, do not give you any proprietary rights in the name.
In summary, if you have a distinctive and valued brand name for your confectionery product, the strongest form of protection is registering it as a trade mark.
Distinctiveness – make the name unique!
For a name to registrable it must distinguish your goods or services. If the brand is descriptive for example, then the Trade Marks Office will not allow you to register it as this would give you a monopoly over something that other traders might have a legitimate need to use.
For this reason, names such as popping candy or jubes can not be registered on their own because over time they have become generic in the confectionery industry and are considered to be descriptive (there was in fact a Trade Marks Office hearing about this issue in respect of the words Popping Candy). Brands such as Flake, Jaffas, Freckles and Snakes Alive have been protected trade marks from the time of their very first use have not become generic.
Maintaining your brand
Industrial designer, Hector Lan once famously stated that: “Machines wear out, cars rust, people die, but what lives on are the brands.”
Once you have obtained a trade mark registration the registration needs to be maintained and managed.
Below are some handy tips on how you can do this:
Handy trade mark safeguarding checklist
Below is a list of some trade mark tips to ensure that once you have protected your brand as a registered trade mark it doesn’t loose it sparkle or bubble well into the future:
1. Trade mark law is based on a “use it or lose it” philosophy. If you do not use your registered marks, third parties may challenge the marks on the basis of non-use.
2. Trade marks should never be used in a generic sense as they may become vulnerable to removal from the Trade Marks Register. A good rule of thumb to use your trade mark as adjectives rather than verbs or as nouns (for example, “Enjoy ROLO® chocolates” (correct use), rather than “Have a Rolo”).
3. Subject to continuous use, it is crucial to renew your trade mark renewal every ten years. Australian icons such as Arnotts’ parrot image have been registered since the Trade Marks Office first opened in 1906.
4. You need to ensure that you use your trade marks in the same form in which they are registered. Changing a minor aspect of the mark might impact on the validity of their registered trade mark rights. This may necessitate the need to have some sort of monitoring process in place, particularly for companies with very large trade mark portfolios where the brands are continuously “revamped”;
5. Using the “®” symbol next to the mark is advisable if the mark is registered as a trade mark in Australia. Care should be taken that marks bearing the ® symbol are not used on goods exported to countries in which the trade mark owner does not have registered rights in that country. (Note that it is against the law to use this symbol if the mark is not registered in Australia).
6. If you are considering extending use of a brand or mark to additional products in the foreseeable future (such as foods or services), it is important that additional trade mark protection is considered.
7. If you are using more than one trade mark, make sure that the additional trade marks are afforded proper recognition by positioning and by the use of trade mark symbols. Advertising should also direct attention to the trade mark character of the added marks for example, by setting out the trade mark in quotation marks and separately from the main body of the marketing material.
Toblerone brand-owner has protected the special pyramid shape of its packaging and triangular chocolate bars as trade marks
The maker of Milka chocolate has protected its lilac colour for its chocolate packaging
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