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Making your mark (so no one else can)

June 12, 2018


Partners Richard Watts
Senior Associates Raymond Scott

Intellectual property

Hasbro’s recent trade mark registration in the United States for the smell of Play-Doh serves as a great reminder of the power of intellectual property rights, in particular trade marks.

What does a “sign” cover?

Under the Trade Marks Act 2002, a trade mark is defined as a sign capable of being represented graphically distinguishing the goods or services of one person from those of another person. “Sign” has a very wide definition and includes everything from a word to a colour to a taste.

Our wide definition of sign is similar to that in Australia, although Australia has included “aspect of packaging” and left out “taste”. The United Kingdom on the other hand has a broad statutory definition of a trade mark as “any sign capable of being represented graphically”, with more limited examples, such as words, designs or the shape of goods or their packaging. However the focus on visual marks has not stopped UK businesses from registering trade marks like smells, as long as the mark can be represented visually, such as by a chemical equation or recipe.

NZ’s attempt at pushing the boundaries

A search of our trade mark register shows that businesses are trying to make the most of our wide definition. A few highlights of the register are:

  • The Warehouse owns a trade mark registration for its jingle, “the Warehouse the Warehouse where everyone gets a bargain”;

  • Similarly, Pizza Hutt has a trade mark for its famous phone number jingle, “0 8 hundred eighty three eighty three eighty three”;

  • McDonalds has a trade mark registration for its chip packet design:

  • Shell had a trade mark for the layout of its petrol stations; and

  • Something to keep in mind next time you pass a building site is that Fletcher Building has a trade mark for the pronunciation of “GIB”.

How it’s looking overseas

Although we do have a very wide definition, there are some “signs” for which there are as yet no New Zealand trade mark registrations, like smells and tastes. However, our counterparts around the globe are pushing trade mark to the extent of its definition.

The United States leads the way as far as peculiar and eccentric trade marks go. Footwear chain Flip Flop Shops has a trade mark registration for the coconut smell that it uses in its stores. Similarly, Verizon has a trade mark registration for the “flowery musk scent” it puts through its stores.

The Eddy Finn Ukulele Company has a registration for the piña colada smell it applies to one of its ukulele models. However, it apparently ran into trouble with international customers when the ukuleles lost their smell after being shipped overseas.

World-champion sprinter, Usain Bolt has two trademark registrations for his signature “lightning bolt” pose where he leans back with one arm to the sky and the other pulled back by his ear.

What’s the point?

Trade marks provide an exclusive right to use the trade mark throughout the country in which it is registered to promote the goods and/or services it covers. This is particularly useful if your product has a distinctive smell, taste or sound as a trade mark registration offers legal protection to prevent others from trying to imitate that aspect of your brand.

An important thing to remember is that if you are going to apply for a non-conventional trade mark it must be distinctive of the product itself, ie you cannot generally get a trade mark for the scent of a perfume as the scent is the very essence of the product.

Non-conventional trade marks, once registered, are particularly useful to distinguish your business from others. From a business perspective, obtaining trade mark protection for key components of a brand, even if they are not standard word or logo trade marks, is likely to enhance the overall value of the business’s intellectual property, and restrict competitors from trading in your space.

So if your business is often associated with a quirky shape, smell, taste or sound, you may be able to seek a trade mark registration to gain monopoly rights in those unusual, but valuable, key brand elements.