IP - See It, Hear It, Just Don't Touch It | BTalk Australia

Last Updated Jan 21, 2009 12:14 AM EST


Cadbury Limited is trying to protect various shades of the colour Purple, claiming that it's part of their own "intellectual property". Today on BTalk Australia Phil Dobbie asks Peter Willimott, Director of Marketing and Customer Engagement at IP Australia, what sort of IP assets you can protect and how exposed are you if you don't register them?

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  • Today's Transcript
Phil Dobbie: Welcome to BTalk Australia. Today: have you protected your businesses intellectual property? That's coming up. About 10 years ago, Cadbury Limited attempted to trademark various shades of the colour purple. They'd been using it on their packaging for years and I suppose it's fair that they didn't want someone picking up another brand, thinking they'd grabbed a bar of Cadbury chocolate. So, just what is trademarkable and what constitutes intellectual property? Peter Willimott is the director of marketing and customer engagement for IP Australia. Peter, tell us about the Cadbury case first of all. Were they successful in trademarking purple?
Peter Willimott: The bottom line is, at the moment, no --- they've sought to protect a particular shade of purple, which they felt represented their brand or their business in the marketplace and that customers were associating certain attributes, positive attributes, around that colour. They felt that Darryl Lee, in using a purple colour in their packaging as well were infringing their rights. To date, it's gone to the federal court and as such, Darryl Lee is probably coming out on top at the moment.

Dobbie: Right, so I mean, this case has been going on for a long time though, hasn't it? So it shows that there's a big grey area, rather than a purple area --- there's a big grey area involved in cases like this.
Willimott: To some extent, I guess what is trademarkable in terms of alternative trademarks or nontraditional trademarks is a little bit of a new area. And I think it's taking the courts quite a degree of consideration to really work out where the law stands. But the nontraditional sort of marks are a phrase, or in this case, a colour; there are pictures, there are shapes. You can trademark a sound, even a smell.

Dobbie: Traditionally, of course, we always think of a trademark as being a company logo and perhaps the tagline that goes with that logo. But increasingly, people are trademarking elements that are associated with specific advertising campaigns.
Willimott: Yes, specific advertising campaigns and aspects of their product. So, in terms of say sound, I know McCain's has expressed interest in trademarking the ping [of an oven], the AFL Siren is trademarked. There's a little jingle associated with some poker machines and that's also been trademarked. So it's things, I guess, in terms of sounds, when someone hears those sounds, they associate that sound with a particular brand of product.

Dobbie: How do you determine what's trademarkable? Because as with a piece of music, you know, there're only so many basic riffs. It becomes pretty hard to tell what's totally original and what's made up of constituent parts of someone else's work. So how do you draw the line?
Willimott: We look at a number of things that are present in the act so we look at things based on the registerability and the trademarks act. We look at it to see whether it would cause confusion in the marketplace, or if it was too similar to something that already exists in the marketplace. But the way the trademark system works is there are 45 different classes of goods and services. So someone might seek to register a trademark in a particular class. If you wanted to, Phil, if you started making beer and you wanted to call it Phil Man's Beer, you could probably register that as a trademark in the class for beer. But, if someone came along and thought, alright, I'm a concrete manufacturer, and I want to call my concrete manufacturing business Phil Man, you know, we would look at it and say "Is that likely to cause confusion in the marketplace?" Probably not, because it's not likely that a beer manufacturer will also be involved in the manufacturing of concrete.

Dobbie: Yeah, I'm just amazed that you managed to identify me as a beer man and we've only been talking for a few moments.
Willimott: And that's just a hunch.

Dobbie: Now, do I need to trademark? I mean, if I've registered my business name, that's going to stop someone else coming along and using that same name, presumably.
Willimott: Unfortunately, that's a myth. Registration of a business name is purely an administrative thing. They're really very much misunderstood across Australia because, basically, a business name registration is simply a way of identifying an owner or proprietor of a particular business in a particular state or territory. It doesn't give you any proprietary rights to the name. Only a trademark can really do that. I think you asked do you have to register a trademark? Well, the answer is no, you don't have to register it. You can actually put a mark out into the marketplace and put a little TM in there, that shows other traders and other people that you're claiming that mark as a trademark. We think it's better if you actually take the effort to register that trademark. That means putting an application into IP Australia. What that means is we'll look at every other registered trademark in Australia and see if what you're seeking registration for is similar or different to what's already been registered and if it meets the requirements of the act. Then, we'll register it and that means you can put a little R in a circle after your mark and that really makes it little bit more enforceable. I think it puts a bit of bite to the bark, if you like.

Dobbie: Yeah.
Willimott: I also think using an R in a circle acts as a barbed wire fence around your brand. It's telling people that you own this. You've taken the effort to register it. You know what you're about and it's a bit of a keep away warning sign to potential imitators.

Dobbie: Now can I register anything at all? Is it open slather in terms of what names I can use?
Willimott: No, there are certain restrictions on what you can and can't register. For example, you'll find it really quite difficult to register trademarks that denote the quality or intended purpose or value of goods or services. So if you try to register something that had "superfast" or the "best" dry cleaning service, that would be difficult to register; similarly, if you try to register a trademark that uses a common surname or geographical name. So, if you try to call it Jones's Plumbing, that would be a difficult trademark to register because we would sort of think, there may be other Jones who are plumbers who may wish to use the word Jones in their business name or in their trademark.

Dobbie: We'd could find ourselves with an acute shortage of plumbers if that was the case. What about online? I mean we've got the case where I know there's a bit of legal action around the name Realestate.com.au. I guess that's similar, isn't it, really? It's taking a common proper noun and applying it to a web domain.
Willimott: Well, yeah, in that case, they're really seeking trademark protection for the entire term as a mark, so in the way it was written rather than those words itself. But it's an interesting area: the crossover between domain name registration and trademark registration.

Dobbie: In that case, it hardly seems fair for everyone else, you know, they got in there first and they've almost claimed the category, haven't they? So, perhaps we got it wrong when it comes to the rules around registering domains.
Willimott: Yeah, I think the domain name registration system really took a little bit of time to get up and running. You know, it took a while for policy to catch up with what was actually happening in the marketplace.

Dobbie: Now a trademark's very different from a patent, of course, isn't it?
Willimott: Indeed, yeah, trademarks protect logos, brand names, and like I said before, sounds.

Dobbie: Yeah.
Willimott: Patents really protect inventions, new ways of doing things.

Dobbie: Do you think a lot of businesses are falling short on protecting their IP?
Willimott: That's a tough one to answer. I think there's always a case for greater levels of awareness and understanding of intellectual property because it really is important to the success of the business. But, particularly if that business is involved in innovation (and even with some businesses that aren't involved in innovation), they might be doing something innovative that's stands them apart from their competitors. That nub of innovation there, it might, it might be what distinguishes them from their competitors. And therefore, it's a pretty important competitive advantage and I would say that's worth protecting.

Dobbie: In a lot of businesses it falls through the cracks, marketing thinks --- it should be legal's responsibility and legal thinks the marketing people should have told them about it. I see a lot of back passing going on.
Willimott: You're probably right there --- it's a fairly new type of concept and maybe a lot of businesses haven't adapted fast enough and thought right, we need an intellectual property manager. And that manager can work in two ways; they can seek to, I guess, identify an IP in the business and make sure its adequately protected and then they play an enforcement role, where they might be actively scanning the marketplace to see if anyone is coming near their patent or their trademark or even their design. In that case, they can take appropriate action to maintain integrity over trademark or over patent in the marketplace.