The current trend is that a good name and logo may not be sufficient in our sophisticated and competitive market. Consider luxury goods: for high end cosmetics products, an attractive container is often the key selling point; for luxury watches, a unique and recognisable look and shape is equally or more important than the brand. For more prosaic products on our supermarket shelves such as bottled water, energy drinks, tissues, chocolates, it is often the trade dress that carries the commercial success of the product. With so much effort driving the creation of the trade dress it is not surprising that savvy owners wish to protect to the look, shape, or get-up of their products and services.
Growth of trade dress for aesthetic appeal
Trade dress is a broad term covering distinctive, non-functional elements which distinguish one trader's goods or services from those of another. In some cases it may be a single element such as colour or shape of packaging or containers, configuration or arrangement of elements, through to a total image concept embracing signage, logos, uniforms, merchandising, décor, websites and the like. To gain registration of trade dress in Australia, the first hurdle is to convince the Registrar that the elements being claimed function as a trade mark, to create recognition of the source of the products or services in the customer's mind, and are not seen as merely functional or decorative.
How does the Australian Trade Marks Office approach registration of trade dress trade marks?
The Australian Trade Marks Act defines a trade mark as "a sign" which includes any of the following: letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound, or scent. The non traditional signs, being aspects of packaging, shape, colour, sound, and scent, were introduced with the Australian Trade Marks Act 1995. While registration of some non traditional marks, for example shapes of bottles, tablets, toys and containers has progressed relatively easily, there is a 'tension' for protection of other marks which include trade dress components, as the boundaries of what constitutes a trade mark are expanded in the marketplace and the registration regime catches up.
For decades perfumery companies have registered their distinctive perfume bottles, fancy liqueur bottles shapes have been commonly registered, as have unusual shapes for food products such as confectionary and biscuits, as well as stitching patterns for clothing and chevron shapes and tread patterns for shoes. As trade mark owners become more innovative in their branding, and seek protection for different aspects of get-up and trade dress, the Australian Trade Marks Office must overlay the registrability tests for traditional trade marks, onto these more innovative marks.
Therefore, marks such as Nestlé's confectionary shape1 for LIFESAVER "the candy with the hole in the middle" was refused registration over a decade ago, as were Guylian's2 chocolate shell shapes. Last month in an appeal by Guylian on the registrability of its chocolate seahorse shape, the Federal Court held that the shape was not distinctive and was unregistrable3.
Other aspects of get-up or trade dress have been registered only after lodgement of evidence of use, for example the well known Red Stripe on the heel of men's shoes4 used by Lloyd Shoes was registered only after evidence showing that a red stripe on a heel of a shoe could and did function as a trade mark.
Registration trends: not all trade dress marks are created equal
The spectrum between functional and decorative elements at one end and totally arbitrary and fanciful trade dress elements at the other, is a continuum. For certain marks such as the colour GREEN petrol station trade dress5 the Court was not convinced that the trade dress was sufficiently arbitrary or had become sufficiently distinctive through use, and registration was refused. Cadbury, in seeking registration of its colour PURPLE trade dress for chocolate generally was only able to convince the Registrar that the trade dress was distinctive for block and boxed chocolate6.
Since the provision for registration of aspects of packaging, colour and shape trade marks was introduced with of the 1995 Trade Marks Act in Australia, the success rate has not been high as can be seen from the statistics below:
Protection of trade dress: education and registration
A review of pending trade mark applications filed in Australia in the past 12 months shows a growth in filings of trade dress type marks and some of these will test the reach of trade mark protection available under the Australian legislation. As trade mark practitioners we recommend that trade mark owners seek to register their trade dress for the protection it affords against imitators, and the deterrent it provides by having the trade mark on the public register serving as notice to others of the owners claim to trade mark rights.
For trade dress trade marks, it is important that owners proactively educate their customers by reference to the trade dress in advertising or promotion, identifying the trade dress features as a trade mark rather than a decorative or functional or utilitarian element. This type of consumer education needs to be accompanied by active monitoring of competitor activity to challenge misuse by competitors and enforcement of rights to maintain exclusivity.
It is suggested that for new and innovative trade marks that push the boundaries of registrability, taking positive steps at the time the trade dress is adopted is essential. It is at this initial stage, while the trade dress is unique, that the trade mark may more easily be protected. Once trade dress elements are copied or imitated, they risk becoming common and generic, which became the insurmountable hurdle faced in Australia by Guylian for its shell and seahorse chocolate shapes and by Cadbury for its PURPLE trade dress for chocolate confectionary.
3 Chocolaterie Guylian N.V.v Registrar of Trade Marks  FCA 891
5 Woolworths Limited v BP plc  FCAFC 132
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