Can you trademark a word or colour? The law says it depends
While you may think that a word is just a word and cannot be owned by an entity, there are many instances where the unwitting use of certain words, and even colours, has landed people and businesses in trouble with the law. This is particularly the case when organisations trademark a word or colour, thus limiting the use of it by other companies.
Seeking to trademark a word can elicit the threat of legal action
An Australian author of children’s books, who used the name “Zary” for her spirit warrior heroine, found herself threatened with legal action by the international fashion giant Zara after she sought to trademark the book character’s name.
The Spanish-based global company behind Zara registered its opposition to the author trademarking the word “Zary”, arguing it was too similar to their international brand name.
Under section 60 of the Trade Marks Act 1995, a trademark may be opposed if a previously registered trademark has acquired a reputation in Australia and the new proposed trademark would be “likely to deceive or cause confusion”.
Under the Trade Marks Act, the author must reach an agreement with Zara before she can proceed with using or associating the name “Zary” with merchandise such as clothes, toys, apps and books.
Use of similar brand name may lead to lengthy and costly legal battle
A restaurant in Sydney named Down N’ Out was hit with legal action by a US burger chain called In-N-Out Burger, which accused the Australian restaurant of trading off its “legendary reputation”. This is not a stand-alone case, with McDonald’s and other big fast-food chains also having fought against businesses launching brand names similar to their own.
Even the words “Sydney Zoo” prompted a legal battle between the well-established Taronga Zoo and a new zoo located in Sydney’s west.
Words can be protected to avoid exploitation for commercial purposes
The Today show on Channel 9 found itself in legal trouble for using the word “Anzac” as the code word in the program’s cash giveaway. This seemed unusual, as the word is very commonly used, especially around April 25th every year.
However, under federal law, the word “Anzac” is preserved under the Protection of Word Anzac Regulations. This prevents the word from being exploited for commercial purposes or used in a way that denigrates what the word represents. The word “Anzac” can only be used with the authority of the Minister for Veterans’ Affairs.
Under the Crimes Act of 1914, a penalty of up to $51,000 may be imposed on a corporation for the breach.
Do your due diligence before applying to trademark a word
It pays to do some thorough research into the intellectual property attributes of a word or name before using it in your communications or applying to trademark it.
IP Australia is an invaluable resource for this exercise, detailing important trademark information as well as providing an online service enabling you to apply for your own trademark.
Taking care with use of trademarked colours
Using the same brand colour as another business can also land you in legal trouble. For instance, Cadbury has been to court on numerous occasions to protect its purple packaging, while Australian brand Bega faced legal action by American food giant Kraft, after Bega used a similar yellow colour on its peanut butter jars as the colour used by Kraft.
Aside from words, names and colours, it’s also possible to trademark sounds, movements, shapes, scents, logos, plant material and even geographical place names for products.
Before applying to trademark a word, name or colour, it’s best to seek expert legal advice, as intellectual property challenges can be very costly and time-consuming.