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Trade Mark Series

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Brand Control, Part 7: “Beyond the Logo” — Trade Marking Product Shapes, Sounds, and Scents

When most people think of trade marks, they picture logos or brand names — the usual suspects. But in the eyes of the law, a trade mark is any “sign” capable of distinguishing your goods or services. That opens the door to a broader, bolder set of brand assets.

Welcome to the world of non-traditional trade marks — where shapes, sounds, colours, and even scents can be legally protected.

🧴 What Can You Register?

Some of the most iconic brand cues aren’t names or logos — they’re sensory experiences. And if consumers link that experience to your business, it might just qualify for registration.

Shapes
Examples:

  • The triangular prism of a Toblerone bar

  • The unmistakable contour of a Coca-Cola bottle

But be warned: shape marks face serious scrutiny. If the shape is dictated by function or gives a competitive advantage (like a handle or grip), it likely won’t qualify. The Mayne Industries decision is a key example of this strict approach.

Sounds
Think:

  • The MGM lion’s roar

  • The McDonald’s “I’m lovin’ it” jingle

To register, the sound must be distinctive and consistently used as a badge of origin — not just part of an ad.

Scents
Rare, but not impossible. One of the few global successes? A floral fragrance registered in the U.S. for sewing thread. Australia is stricter — but if you can prove that your scent is uniquely linked to your brand (and not functional), it may stand a chance.

Fun fact: As at the date of publishing this blog post, there are only two registered scent marks in Australia – one being for a eucalyptus scent applied to golf tees, and the other for a cinnamon scent applied to non-wood based furniture.

How oddly specific …

Colours
Cadbury’s battle to protect its signature purple (Pantone 2685C) is the most high-profile example in Australia. Colour marks are hard to secure — especially for common colours or combinations — but can be powerful if consumers identify them with your business.

🎢 The Legal Hurdles

These marks face a higher bar than standard word or logo marks. Here’s why:

  • Inherent distinctiveness is rare. Most non-traditional marks only succeed if they’ve acquired distinctiveness through long-term, exclusive use.

  • Functionality kills applications. If a shape or sound serves a practical or aesthetic purpose, it’s unlikely to pass.

  • You’ll need evidence. Think sales volumes, advertising spend, market surveys, and media references that link the feature to your brand.

This isn’t checkbox territory — it’s prove-your-case territory.

💡 IP Mojo Tip

Your brand isn’t limited to what you can type or sketch. If your product’s shape, jingle, colour, or even fragrance makes people think of you — and no one else — you may be sitting on a powerful trade mark.

Just remember: non-traditional doesn’t mean non-challenging. You’ll need to back it up with serious evidence. But for brands that break the mould, the legal protection is well worth the effort.

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Brand Control, Part 6: “Use It or Lose It” — Genuine Use and Trade Mark Non-Use Risks

Registering a trade mark is a powerful step in protecting your brand — but it’s not a “set and forget” exercise. A trade mark registration gives you exclusive rights, but only as long as you’re actually using the mark. If not, those rights can be challenged — and even removed.

Welcome to the world of non-use risk.

⏳ The Non-Use Sword of Damocles

Under section 92 of the Trade Marks Act 1995 (Cth), a registered trade mark can be removed from the register — in whole or in part — if it hasn’t been genuinely used in Australia for a continuous period of three years.

It’s not enough to just own the registration. If someone applies to remove your mark, and you haven’t been using it properly, the burden shifts to you (under section 100) to prove genuine use.

You get a couple of years’ grace when you first apply to register a mark – no-one is allowed to strike it out for non-use within its first five years.  However, after that period, if you haven’t got evidence of use of the mark as a trade mark within the last three years, practically anyone can apply to IP Australia to strike the registration out for non-use.

It’s also important to note that minimal or token use — or use for goods/services that fall outside your registered classes — might not be enough to save the mark.

✅ What Counts as “Genuine Use”?

Genuine use means real commercial use — not legal window-dressing.

Examples include:

  • Selling goods or services under the mark in Australia

  • Use of the mark on product packaging, websites, online listings, advertisements, invoices or other customer-facing materials

  • Promotional campaigns that demonstrate actual market exposure

Crucially, the use must occur in Australia, or in the jurisdiction where the mark is registered. International use won’t save an Australian registration.

❌ What Doesn’t Count?

Some activities may feel like “use”, but the law may see them differently — especially if challenged:

  • Trade mark squatting — registering marks with no intent to use them, just to block others or hold for ransom

  • Keeping a dormant website with no actual trading activity

  • Intra-group transfers or token licensing that generate no public exposure or commercial sales

Courts are good at sniffing out contrived “use” made only to defend against a removal action.

💡 IP Mojo Tip

Use it like you mean it.

A registered trade mark is only as strong as the use that backs it.  You should:

✔️ Keep good records of sales, ads, online listings and brand use.

✔️ Don’t register in broad classes “just in case” unless you can genuinely support that use.

✔️ If you’re not using part of your registration — and don’t plan to — consider cleaning it up proactively before someone else forces the issue.

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Brand Control, Part 5: “The Subtle Art of Brand Control” — Trade Mark Ownership and Assignment

Trade marks are valuable assets — but like any asset, their value depends on who owns them.

Too often, businesses assume that if they’re using a brand, they own it. But that assumption can fall apart quickly in the face of legal scrutiny, especially when an investor, acquirer or opposing lawyer starts asking questions.

Getting trade mark ownership wrong isn’t just a technical slip. It can torpedo a funding round, delay a sale, or even expose a business to infringement claims from within its own camp.

🔗 Common Ownership Traps

Let’s start with a few real-world scenarios where ownership can become dangerously unclear:

1. Employees vs Contractors
If an employee develops a brand name or logo in the course of their employment, the default position is that the employer owns it. But if you used a contractor — say, a freelance designer or marketing agency — then unless there’s a clear written agreement transferring IP, they may legally own the mark.

This is especially true if the contractor applied to register the trade mark themselves — and it happens more often than you’d think.

2. Founders and Side Projects
A founder might register the brand name in their own name early on, before the business is incorporated. That might seem harmless — until the business seeks capital, or goes to sell, and it turns out the company doesn’t actually own its own brand.

Investors will spot this immediately in due diligence. So will buyers. And neither of them will want to negotiate with a founder’s ego when they’re paying for a company asset.

3. Joint Ventures
When two businesses collaborate on a new offering, they often co-create a brand. But without an express agreement, who owns it? Half each? One party? Neither?

Ambiguity in a joint venture brand is a recipe for dispute — particularly if one party starts using the brand solo down the track.

📑 Assignments and Transfers: Cleaning Up the Chain of Title

The good news? Trade marks are assignable — they can be transferred from one entity to another like any other form of property.

But they need to be:

  • Documented in writing — via a deed or agreement; and

  • Formally recorded with IP Australia (if the mark is registered).

Some common triggers for assignment include:

  • Business restructures (e.g. transferring IP from founders to the company, or from one group company to another)

  • Sale of business or assets

  • Fixing past mistakes (e.g. if a mark was filed by one entity but you want the trade mark held by another entity)

You can’t just tell people a trade mark belongs to your company. If it was registered under someone else’s name — a founder, contractor, or prior owner — you need to assign it, and record the transfer.

🚫 Assignments Don’t Cure Invalidity

Be careful — an assignment won’t fix an invalid application.

If a trade mark application is filed in the name of a party who is not the true owner of the mark at the time of filing, the application is invalid. You can’t fix that simply by assigning it later to the correct entity. The application is fatally flawed from the start — and may be removed or opposed on that basis.

So how do you know who the “true owner” is?

Ask:

  • Who created the mark?

  • Was it created by an employee, contractor, or external agency?

  • Was it commissioned, and if so, under what terms?

  • Who controls the use of the mark in trade?

  • Who will actually use the mark in connection with goods or services in Australia?

In most cases, the true owner is the entity that first intends to use the mark, or controls its use in trade and commerce. If you’re registering for a company that doesn’t exist yet — wait until it’s incorporated. If you’re using a contractor, make sure IP is assigned before the application is lodged.

If you’ve already used the mark as a trade mark before getting your corporate structure sorted, then the person or entity that first used it is probably the true owner. In that case:

  • Either apply in that party’s name, or

  • Assign the trade mark to your intended applicant before filing.

In either case, get tax and accounting advice first — there could be capital gains tax or other structuring implications worth considering before assigning IP or applying under the wrong name.

💡 IP Mojo Tip

Own the brand before you build the brand.

  1. Identify the true owner on day one – the party that first creates and controls use of the mark.

  2. Put it in writing – deed of assignment or employment/contractor clauses that clearly vest IP.

  3. Record it – lodge the assignment (or the application) in the correct name with IP Australia straight away.

  4. Audit early, audit often – confirm ownership before every financing, restructure, or marketing push.

If you nail these four steps, you’ll avoid the “who-really-owns-it?” drama that derails deals and drains legal budgets.

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Brand Control, Bonus Part 4A: “Black, White, or Brand Colours?” — Filing Your Trade Mark in the Right Format

When it comes to registering your logo as a trade mark, most people obsess over what to file — but give little thought to how they file it.

That might sound cosmetic. It’s not.

Whether you lodge your logo in colour, greyscale, or black and white can significantly affect your legal rights — especially when it comes time to enforce them or defend against a non-use challenge.

⚖️ Why Format Matters

The version of your logo that you register defines the scope of your protection. That includes not only the design itself, but also the colour (or lack of it). Get this wrong, and you may end up with a trade mark that’s narrower than you think — or worse, vulnerable to attack.

Let’s break down the key options.

🖤 Filing in Black and White (or Greyscale)

This is the default for many businesses — and with good reason.

Pros:

  • Broader protection: A black-and-white filing generally covers all colour variants, meaning you can enforce your rights even if you present the logo in red, green, blue, or rainbow.

  • Future-proofing: Gives you flexibility if your brand palette evolves.

  • Administrative simplicity: No need to worry about strict consistency between your filed version and the colours you actually use.

Cons:

  • If colour is a core brand element (think Cadbury purple or Tiffany blue), filing in black and white might dilute your distinctiveness case.

  • In the EU and some other jurisdictions, courts and registries have begun interpreting black-and-white marks more narrowly — treating them as literally black-and-white. That means that in those jurisdictions, using your mark in colour may not constitute use of your registered black-and-white version.  This trend hasn’t reached Australia (yet), but it’s worth noting.

🎨 Filing in Colour

In some cases, colour isn’t just decoration — it’s branding. If your logo’s colour scheme is heavily marketed and instantly recognisable, a colour filing might be worth it.

Pros:

  • Supports claims to distinctiveness through colour — which can help if you’re pursuing colour trade mark protection in its own right.

  • Reflects real-world use if your brand always appears in that colour scheme.

Cons:

  • May limit your rights in some jurisdictions — but not in Australia, where a logo filed in colour will generally still cover variations in other colours unless colour has been expressly claimed as part of the trade mark.

  • In Australia, there’s no general risk of non-use removal for using your logo in different colours — unless your registration specifically claims colour as a feature. That said, it’s still cleaner (and less arguable) to use the mark in a form close to the one registered.

🎯 Some Things to Watch

1. Evidence of Use Needs to Align (More or Less)

If your logo is registered in colour but you only ever use it in black and white (or vice versa), and you’re defending against a non-use removal action, your evidence might still be accepted — but it’s always safer if the colours match, or if colour wasn’t part of the mark to begin with.

2. Madrid Protocol and International Filings May Be Affected

Whichever registration forms your Madrid Protocol base — whether or not it’s an Australian application — the representation you file (including colours) will carry through to your international applications.

Some jurisdictions treat colour as limiting, even if Australia doesn’t. In the EU, China, South Korea and others, colour is more tightly tied to the rights you’re granted. So what might be broad in Australia could be narrow overseas if you rely on a colour version as your base.

🧭 Rule of thumb: File in each jurisdiction — including separately if necessary — in the same format in which you propose to use the mark there.

3. Misalignment with Brand Identity

If your brand identity is highly colour-driven (again, Cadbury purple or Tiffany blue), filing a version in colour without claiming the colour might undercut future arguments that the colour is distinctive.

You can’t have it both ways: either colour matters, or it doesn’t. If it does, claim it. If it doesn’t, don’t build your distinctiveness case on it later.

✅ Best Practice in Australia

So, what should you do?

  • If colour isn’t essential to your brand’s identity: stick with black and white (or greyscale) for broader and more adaptable coverage — unless you’re filing via the Madrid Protocol and plan to use the mark in colour in a colour-sensitive jurisdiction. In that case, you may need to file your base application in colour too — as long as that won’t cause issues in your base jurisdiction.

  • If colour is central to your brand strategy: consider filing both a colour version and a black-and-white version — or prepare strong use evidence to back your colour claim.

  • If your logo use varies across products or channels: a black-and-white filing gives you the most legal breathing room in Australia. Or, if your variants differ materially, file multiple versions (or a series application, where appropriate).

⚠️ Filing in multiple formats may mean more upfront cost — but it could save you a fortune later if your brand is challenged or infringed.

💡 IP Mojo Tip

Don’t confuse design preference with legal strategy. Your brand might look best in colour — but from a legal perspective, black and white may give you more options.

That said, the best general rule is this: File it how you propose to use it.
If you know the colour combinations you plan to use for the medium term, consider a series application covering those variants — or file multiple applications if that’s cleaner for your international strategy.

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Brand Control, Part 4: “Lock It In” — How and When to Register Your Trade Mark

You’ve chosen your name. You’ve cleared it. You’re confident it’s distinctive and available. Now it’s time to make it yours — legally.

A strong brand name or logo might help you win customers, but unless it’s properly registered, it won’t help you win disputes. And the longer you delay, the more you risk someone else locking it up first.

When Should You Register?

The short answer: as early as you can. Ideally, you’d file before launch — while you’re still in development — so you can resolve any issues before your brand goes public. But that’s not always practical.

  • Before launch: Best practice. Gives you a chance to pivot if there’s a conflict.

  • Right after launch: Still fine — but the longer you wait, the more you risk third-party interference or knock-offs.

  • After years of use: Better late than never. Prior use may support your rights, but without registration, they’re much harder to enforce.

And remember: while Australia protects first use, many countries follow a strict first-to-file rule. If someone else files your brand overseas before you do — even without using it — you may lose your chance to register or enforce it.

Trade mark “squatting” is a thing – a thing preferably to be avoided.

Where Should You Register?

Start with the country you’re operating in — typically your home market. In Australia, that means filing with IP Australia under the Trade Marks Act 1995.

If you’re looking to expand globally, consider the Madrid Protocol — an international filing system that lets you apply in multiple countries via a single application. You must first have a home-country application or registration, and your international rights will depend on that base filing.

However, Madrid isn’t always the right tool for every country or situation. In some markets, a direct national filing is still better — especially if you’re concerned about local examination delays, enforcement practicalities, or use requirements.

🧳 We’ll go deeper on global strategy in Part 9: From Garage to Global.

What Kind of Trade Mark Should You File?

There’s more than one way to register a mark. The form you file should match your brand strategy:

  • Standard mark: For word-only marks (names, taglines). Best for maximum flexibility.

  • Device mark: For logos, custom fonts, or stylised branding elements.

  • Series mark: For similar marks with small variations (e.g. Tasty Treats vs Tasty-Treats). Less common, and sometimes more trouble than they’re worth.

  • Defensive mark: Available only for famous brands, offering broader coverage across unrelated classes.

  • Certification mark: Used to indicate goods or services meet a recognised standard (e.g. organic, halal). Strict rules apply.

One thing to watch when filing a logo or device mark: if you file it in colour, your rights may be limited to that specific colour scheme. Unless colour is a core part of your brand identity, it’s usually better to file in black and white or greyscale — so your protection extends to all colour variants.

Like most things, there are exceptions to this.

🎨 We’ll cover colour vs greyscale filing in more depth in an upcoming bonus post.

💡 IP Mojo Tip

The earlier you file, the stronger your position — and the safer your brand. Waiting until you’re “big enough to matter” might just make you a bigger target. Brand protection isn’t a vanity move — it’s risk management with long-term payoff.

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Brand Control, Part 3: “Great Minds Think Alike?” — Clearance Searching and Avoiding Brand Disasters

You’ve found the perfect brand name. It’s clever. Catchy. The domain is available. The branding agency loves it. You’re ready to roll.

But before you commit… have you checked if someone else already owns it?

Why Searching Is Not Optional

It’s one of the most common — and costly — mistakes: a business pours time, energy, and tens of thousands of dollars into branding, only to receive a cease and desist letter from a prior trade mark owner. Worse still, they may find themselves facing an opposition at IP Australia, a rebrand mid-launch, or a lawsuit they never saw coming.

Trade mark clearance searching is your early warning system. Done properly, it can help avoid disputes, legal fees, rebranding costs, and loss of customer goodwill.

And it doesn’t have to be complicated.

Types of Searches

Not all searches are created equal. Depending on your budget, timing, and risk tolerance, here are the key search types you might consider:

  • Knockout search: A quick check of the Australian Trade Mark Register for identical or near-identical marks in your relevant classes. Fast and cheap, but limited in scope.

  • Full availability search: A comprehensive legal review of both registered marks and unregistered use — including business names, social media handles, websites, and domains. This helps you identify potential passing off or s 60 (Trade Marks Act 1995) issues where someone may not have registered their mark, but has a strong reputation.

  • International searches: If you’re planning to operate or file overseas, don’t stop at Australia. Check WIPO’s Global Brand Database, the Madrid Monitor, and key national registers (USPTO, EUIPO, etc). Remember: first to file wins in many countries.

What to Watch For

Even if your exact mark isn’t on the register, you still need to look out for:

  • Similar marks in the same or closely related goods/services
    (e.g. SwiftTech for software vs Swiftek for IT services)

  • Slight spelling variations or phonetic equivalents
    (e.g. Kwik Kleen vs Quick Clean)

  • Well-known unregistered brands
    Even without registration, a brand with a strong reputation can stop yours under section 60 of the Act — if consumers are likely to be confused.

💡 IP Mojo Tip

Clearance is brand insurance. The earlier you search, the cheaper your pivot if needed — and the more confidently you can build your brand knowing it won’t collapse under a letter of demand.