A lion's roar is heard in trademark law

A lion's roar is heard in trademark law

Worldwide intellectual property rights increasingly determine what you see, what you hear . . . and sometimes even what you get.

It is illegal to copy the sound of the lion's roar at the beginning of an MGM-produced film, or the drum role that heralds a 20th Century Fox feature. The five-tone sound used by Intel is protected in Australia, New Zealand and the US; you can even get into murky legal waters if you copy the default ring-tone of a Nokia mobile phone. Sounds, shapes, colours and smells are some of the more unusual items that are increasingly being protected domestically and internationally by intellectual property (IP) law.

The sound of the closing bell of the New York Stock Exchange, Tarzan's "yell" and the tone of the call button for an American Airlines steward are also subject to trademark protection.

The most famous legal case in Australia for pursuing an unusual descriptor for a trademark was the action taken by Cadbury Schweppes Pty Ltd against Darrell Lea Chocolate Shops over the use of the colour purple.

Justice Heerey of the Federal Court found: "Cadbury does not own the colour purple and does not have an exclusive reputation in purple in connection with chocolate in Australia. Darrell Lea is entitled to use purple, or any other colour, as long as it does not convey to the reasonable consumer the idea that it or its products have some connection with Cadbury."

Litigation to protect sound trademarks have proved more successful. The jingle used by food manufacturer Dolmio, described as a Sicilian waltz, is protected, as is the phrase, "Ah McCain", used by frozen food company McCain. Even the 'ping' sound that follows the phrase is protected in that context.

Registered designs are also a popular form of protecting IP. Forever associated with the Sydney Olympics and the gold medal success of Ian Thorpe, Speedo's "fastskin" suit became a registered design in 2000. Three years later, Holden registered the shape of its Monaro.

IP Australia defines a trademark as an unique way of identifying a product or service to distinguish it from its competitors. It is not necessary to register a trademark to use it, but registration provides an exclusive right to use, license or sell that particular trademark.

"A trademark can comprise letters, numbers, words, colours, a phrase, sound, smell, logo, shape, picture, aspect of packaging or any combination of these," says IP Australia. "Words that competitors might use legitimately to describe their goods or services, such as the name of a place or a generic term, may be difficult to register. For example, a plumber based in Adelaide would have difficulty registering the words plumbing or Adelaide as trademarks."

One of the oldest registered trademarks in Australia is the parrot eating a biscuit that has been used as a logo by Arnott's since 1907.

Coca-Cola registered the shape of the bottle used to package its soft drink as a "device" in 1934 in Australia, and then as a "shape" in 1998. McDonald's golden arches was registered in 1968; Eagle Boys Pizza registered the pink glow of its restaurant lighting in 1992.

The increase in the type and variety of aspects of a brand that can be protected - including a colour, a particular scent or a sound - has been driven in recent decades by digital technology and the internet as well as developments in advertising and in marketing theory and practice.

"The way goods and services are promoted and traded has changed markedly in the last decade," says IP Australia's Stuart McLennan, from the marketing and customer engagement division. "Companies started to use colours or shapes to distinguish themselves from other traders and consequently sought protection under trademark law."

In 1995, the federal government changed the Trademarks Act to allow for a new range of marks to be registered.

The legislation has encouraged large numbers of Australian businesses to apply to IP Australia to register sounds.

"But it's cheaper to register these sounds and protect them under trademark law than to stop others from infringing on your intellectual property rights," says McLennan. "In that sense, it's a cheap form of insurance."

Kraft Foods has registered the tune Happy Little Vegemites while Mister Whippy successfully applied for trademark protection of the English folk ballad Greensleeves "when used for the retailing of, and promotion of, food and drink". But the motivation of a West Australian, who successfully applied for a trademark for a particular sound mark is a little harder to understand. It is now an infringement for anyone else to use the spoken word bimbo in a door bell, alarm or chime.

Making a mark

* A trademark can comprise letters, numbers, words, colours, a phrase, sound, smell, logo, shape, aspect of packaging or any combination of these.

* But words that a competitor might genuinely use to describe a business are difficult to lay claim to.

* It is cheaper to register a trademark than defend your image after it is stolen by a competitor.

Fairfax Business Media

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