Trade Dress (Get Up)

We often think of a registered trade mark as a word, a phrase or a logo.  While a majority of registered trade marks fit this description, IP offices worldwide have accepted unconventional marks for registration.  For example, colour has been registered for Louboutin’s lacquered red soles, trademark no. 3,361,597.  Tiffany holds a registered trademark for light blue jewellery boxes.  UPS holds a registered trademark for brown parcel delivery trucks and brown uniforms.  In Australia, a dog shaped trailer is a registered device trade mark of Blue Wheelers dog grooming services franchisers.  These recognised trade marks were once trade dress that had been so well recognised by the purchasing public that they are distinctive and therefore can be the subject of trade mark registration.

Can Trade Dress be Infringed?

Trade dress, therefore, is a badge of origin that has not been registered.  Even if it has not been registered, it can still be the subject of litigation if infringed.  Under the Australian Consumer Law s 18, “passing off” may be claimed against an infringer of trade dress or “get up”.

How to Establish Trade Dress

By using a particular “get up” consistently in marketing and selling goods and services, wherein the get up is distinctive, its “secondary meaning” can be established. Being distinctive means that the get up is different than that of other goods and services, and in the minds of the purchasing public, the get up has a secondary meaning.  The get up is a badge of origin.

Seek Trade Mark Registration ASAP

If get up is strong enough to sue for trade dress infringement, it is most likely strong enough to register as a trade mark.  Instead of only suing under passing off laws, in particular the Australian Consumer Law s 18 and passing off and trade mark infringement under common law, a party can sue under trade mark infringement laws of the Trade Marks Act as well.

A recent case involved Bega’s “jar with a yellow lid and a yellow label with a blue or red peanut device, with the jar having a brown appearance when filled” illustrates the difficulty in proving passing off.  There, not only was the chain of title an issue but also the strength of the secondary meaning of the get up.  Under the Trade Marks Act, the same mark and the same goods and services establishes infringement without having to prove distinctiveness and therefore secondary meaning.  The ownership of the registered trade mark would not be up for scrutiny but would be settled by the register and evidence of the chain of title.

While get up may take time to establish, monitoring a company’s IP portfolio presumably would alert a company to the strength of the get up.  As soon as practicably possible, registering that trade mark would avoid vague and imperfect rights associated with trade dress or get up.