Mark It – A Brief Guide to Trademarking Brands

Trademarking is an involved process that’s often considered at the completion of a branding project, after the client has approved the brand identity and is ready to go to market. At Yoke, we are conscious of developing brands that will hold up against the competition and our approach is to deliver bulletproof brand strategies and brands for our clients.

Guide to Trademarking Brands by Yoke

Recently I attended a seminar on trademarking brands, an important step that often comes as an after thought in the process of developing the name and visual identity for an organisation. The trademark-ability of a brand should be considered in the infant stages of brand identity creation and brand design, and even sooner if nomenclature is a part of the brief. Trademarking has been consumed by the FMCG industry due to the highly competitive nature of supermarket shelves. Consumer products are determined to stand out and avoid brand confusion when stacked in amongst a populace of similar goods.

The seminar, hosted by Victor Ng of Markwell, was a great introduction to the why, how and what, when it comes to thinking, seeking and applying for a trademark of an organisations name or brand identity.

The task of trademarking is involved and often tricky. For brands being developed, or existing in highly competitive / copycat industries it’s highly recommended that your brand be protected against possible imitation by a competitor organisation. Trademarking gives a brand exclusivity in Australia and provides automatic and perpetual protection against infringement and identifies an organisation as the legitimate source of goods and services.

All aspects of a brand’s identity can be trademarked, but the likelihood of getting approval comes down to distinction. If on application it’s determined that another trader could have a legitimate reason to be able to use the same, or similar, trademark in the ordinary course of business, then the registration will not pass.

A business can register for a trademark across a number of categories – word/s, images, shape, sounds, colour, scent and gestures. However, there’s a pecking order when it comes to trademarks with invented marks qualifying stronger than generic marks. Brands with invented words – Google, Vegemite, eBay and Trivago – are robust in the scheme of trademark-ability over suggestive brands like Habitat (furniture) or Latteccino (coffee machines).

The above brings into question brands like carsales.com.au and pharmacyonline.com.au. Brands that would usually qualify as having a very weak mark due to the generic and obvious nature of the name can develop strength overtime. In the case of carsales.com.au, it took eight years and millions in marketing to get the trademark application approved. Similarly, pharmacyonline.com.au took 14 years and significant marketing expenditure to build the brand’s equity to a level that warranted a trademark.

Cadbury assumed they had ownership of the colour purple, when the confectionary giant infamously initiated proceedings against Darrell Lea. The argument presented by Cadbury, in a matter that went on for five years, accused Darrell Lea of misleading the consumer by using a shade of purple that was too similar to “Cadbury Purple”. Darrell Lea disputed the claim arguing that the brand names are quite distinct, retailing occurs predominantly on its own premises, and other competitors, including Nestlé’s Violet Crumble, also use purple. The court ruled that Darrell Lea were not in breach of the Trade Practices Act or mislead consumers. But despite this victory, the case goes to show how fiercely companies will fight to protect their brand identity.

Cadbury Purple Pantone 2685 C
Cadbury Purple Pantone 2685 C.

A particular shape can give a product a unique appearance, but shapes with significant functional features are onerous to register. A normal bottle of wine cannot be registered, as this is a common shape that is adopted industry-wide in the alcoholic beverage sector. Coca-Cola’s glass bottle functions as a trade mark, as this is a distinct design and does not impede the normal course of business for other beverage companies. Similarly, the triangular shape of Toblerone chocolate is qualified as a trade mark, as this feature is decorative, not functional.

Trademarked Aroma Tees
Trademarked aroma tees.

Scent and gesture are the hardest categories to trademark, with only one scent owning registration in Australia – eucalyptus radiata, the smell of golf tees. Gestures need to be specified within a degree of movement and are incredibly complex in the detail of application. Toyota have a trademark on the famous “oh what a feeling” jump, which raises doubt around Jetstar’s use of a similar gesture in their advertising. It could be the case that Jetstar don’t jump as high, or the use of arms is to a different angle.

Toyota's trademarked 'Oh What a Feeling'  jumps
Toyota’s trademarked ‘Oh What a Feeling’ jumps.

An application for trademark cannot conflict with a one that’s already registered or pending. Involve an expert who can help navigate the convoluted process and make sure that the application is accurate. If any part of the application is incorrect or even not-quite-right, penalties apply. Once a trademark is approved the registered mark should be applied to your identity in order to provide the market with a visual cue. However, registering for a trademark is only a part of the process, bulletproofing a brand is much more than this.

Bulletproofing a brand can be achieved by following a number of steps. Incorporating legal design thinking into the naming and branding processes will give an organisation a head start. Testing the register-ability at this inception stage is recommended. If a descriptive name is decided, apply other strategies in the development of the brand identity – word or brand mark (highly distinct), colour selection and imagery in the case of product labels.

Finally, a trademark must be used and the market monitored – after five years of being inactive, another organisation can apply for the mark. A business cannot rely on the IP Australia to recognise competing marks. If a trademark is owned then proactively monitoring the market and your competitors is highly recommended. Act quickly and decisively if you suspect infringement.