Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Wednesday, February 19, 2014

Snorkel decision breathes life into quasi design protection

By Mark Williams, Senior Associate and Registered Trade Mark Attorney

A recent decision of the Australian Trade Marks Office has confirmed that composite trade marks consisting of a combination of shape and word/logo elements can be considered inherently capable of distinguishing, even when the shape has a functional purpose.

Australian Performance Developments Pty Ltd (APD) sought registration of the following composite trade mark in respect of air rams and air intake snorkels for vehicles in class 12. 

APD's application was opposed by Ironman 4X4 Pty Ltd, who argued that the SAFARI SNORKEL logo applied to the air ram was merely a 'colourable flourish' and that the application was really a shape trade mark. It contended that registration of the trade mark would extend to APD an unfair monopoly in respect of a shape of an air ram that may legitimately be required for use by other traders.