Alan Potter of Simpson Grierson looks at the increasing scope of trade mark protection

When most people think of trade marks, they think of words - like KODAK - or logos - such as the Nike "swoosh" - used to identify a product or service. However, there are many other ways of distinguishing the products or services of one organisation from those of another. Among the most interesting of these are smells, sounds, and taste, all of which have been the subject of a recent amendment to New Zealand's trade mark legislation.

In 1994, a fundamental change was made to the definition of a trade mark in New Zealand, to include any sign capable of being represented graphically and that could distinguish the goods or services of one person from those of another. This amendment to the Trade Marks Act 1953 ("the Act") allowed both colours and shapes to be registered as trade marks if they could satisfy the other criteria for registrability under the Act, such as that the mark is either distinctive of, or capable of distinguishing, the applicant's goods and services.

Since then, it has generally been thought that sounds and smells could also be registered as trade marks in New Zealand, even though they were not specifically referred to in the Act. The Intellectual Property Office has generally regarded sounds and smells as being registrable if the applicant shows that the sound or smell has become distinctive of it, and its goods or services.

To remove possible arguments that sounds and smells cannot be regarded as trade marks, the Act has just been amended to specifically allow for registration of sounds and smells as trade marks. At the same time, taste has also been included in the Act, so it is now also possible to register a taste as a trade mark.

The expansion of what can be registered as a trade mark impacts on virtually all organisations operating in New Zealand.

Organisations need to think about how their businesses, products, and services are recognised and distinguished by customers and clients. Whatever it is that distinguishes the products and services, could possibly be registered as a trade mark. For example, Harley Davidson has applied to register the sound of its motorcycles in the United States, which it considered was distinctive of them. If Harley Davidson could obtain such a registration, the possible impact on its competitors could be massive. The registration may even provide an effective monopoly in cruiser type motorcycles that produce the "Harley Davidson rumble".

Organisations will now also need to be much more careful to ensure that their products, services, packaging, and advertising do not infringe the registered trade marks of their competitors. For example, the New Zealand Co-operative Dairy Company has registered the musical composition Greensleeves for retail of dairy products, ice cream, and frozen confectionery. An ice cream van or milk delivery truck could now find itself infringing a registered trade mark simply by playing Greensleeves during its rounds.

Equally, a television advertisement for dishwashing liquid showing someone creating a squeak by rubbing his or her thumb on dishware would seem innocuous. However, this use in New Zealand would infringe Unilever's recently obtained registration for the sound of a squeak produced by the friction of a thumb or forefinger on dishware.

The potential to obtain competitive advantage from registering as trade marks the things that make your company's products or services distinctive seems almost limitless. Remember, a trade mark registration gives an absolute monopoly to use the trade mark for the goods or services for which it is registered. As long as the registration is renewed, these rights can last forever.

What makes your organisation's products or services recognisable? Some of the areas to consider include:

- Colours: Cadbury's application to register the colour purple for packaging of block chocolate and chocolate bars has been allowed by the Intellectual Property Office to proceed to advertisement.
- Shapes: the distinctive bottle shape for Coca-Cola.
- Sounds: The Warehouse, Dolby Laboratories, and Intel Corporation have all registered musical scores as trade marks in New Zealand.
- Smell: Unicorn Products applied to register darts that smell of beer as a trade mark in Australia.
- Taste: think, for example, of a distinctive flavour of lip gloss or toothpaste
- Motion: such as the moving image of a spinning globe.

It may now be possible to obtain trade mark registration to protect whatever makes an organisation's products or services distinctive. If getting this protection would provide a competitive advantage, it could prove an extremely valuable long-term investment.

This is a general summary only and should not be taken as a substitute for specific advice.

Alan Potter is a senior associate in Simpson Grierson's intellectual property law group.

Web site: Simpson Grierson
Email: alan.potter@simpsongrierson.com
March 2001