In Australian trade mark law, a sign is fundamentally defined as an act of communication between a trader and a consumer. While the Trade Marks Act 1995 (Cth) (TMA) requires a mark to be capable of graphical representation, a sign is not in essence necessarily a visible or physical thing; rather, it is an “intimation” or a “badge” that conveys information. Its physical or ontological form—whether a word, a shape, or a smell—is legally irrelevant; its status is determined entirely by its source-distinguishing ability.
The Statutory Definition
Section 6 of the TMA provides an inclusive and liberal definition of a sign, reflecting that almost anything can serve as a carrier of meaning (note that in this article, ‘mark’ and ‘sign’ carry the same meaning). The section provides a purposefully excessive list reflecting its non-exhaustive intent:
“sign” includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
This definition is consonant with international standards, such as those articulated by the U.S. Supreme Court, which holds that it is the source-distinguishing ability of a mark, not its status as a colour or fragrance, that allows it to serve the purposes of trade mark law.
General Limits and Parameters of Signs
The TMA poses a statutory requirement for signs to be distinctive. As such, ‘to distinguish’ has become one of the most litigated terms in trademark law. The language is derived from section 17 of the TMA which defines ‘trade mark’ as: “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”
The qualities of precision and uniformity tend to be perceived as foundational for a registrable sign in domestic and international law. Precision arises because the sign must be expressed in a way that can differentiate with other adjacent signs. Uniformity reflects its requirement to connect to the origin of the applicant’s trade practice – i.e. it cannot be changed or adapted so drastically as to cause consumers to dissociate the mark from the brand.
Cases of Colour Marks
In Philmac Pty Ltd v Registrar of Trade Marks, which dealt with the colour “terracotta” for irrigation pipe fittings, the Federal Court refused to adopt the rigid US stance that a colour could never be inherently distinctive, finding such a rule inconsistent with the Act’s inclusive definition of a sign. Instead, the court applied a “competitive need” analysis, determining that terracotta was not inherently adapted to distinguish because other traders would naturally wish to use it as a “ready code” for measurement compatibility in the irrigation industry. While the mark was eventually registered based on factual distinctiveness under section 41(6), the Philmac analysis highlights a tension in Australian law: a colour that is necessary for the practical functioning of a product can still be registered if a wealthy trader has the resources to make it factually distinctive through massive advertising, potentially overriding the competitive imperative for that colour to remain available.
A similar caution was expressed in BP plc v Woolworths Ltd, where the Federal Court examined the use of the colour “green” for retail petrol stations. The court noted that evidence must be “scrutinized very carefully” when a single colour is claimed as a trade mark to ensure it is actually functioning as a source identifier rather than merely a decorative or functional element. On the facts, the court found the colour green was not inherently adapted to distinguish the applicant’s stations, again forcing the applicant to rely on proof of factual distinctiveness. This case reinforces the Australian judicial trend of treating single colours as having little to no inherent distinctiveness while leaving the door open for registration upon proof of significant market notoriety.
Cases of Shape Marks
While it is doctrinally coherent that any form capable of performing a source-distinguishing act can be a sign, shapes are uniquely problematic because they are often perceived by consumers as functional or aesthetic characteristics of the goods themselves rather than as indicators of source. This tension has led to the development of two doctrinal pathways in Australian law in interpreting the distinctiveness of shape marks.
The first major doctrinal approach in Australia was established by the Full Federal Court in Philips v Remington. This approach treats the issue as a definitional one, centered on the principle that a trade mark must be different from the product it marks. The court reasoned that for a shape to function as a mark, it must be “extra” or added to the “inherent form” of the goods. Under this view, if a shape is inseparable from the product’s function—such as the triangular configuration of rotary shaver heads—it is not a sign because the use of that shape is merely part of the use of the commodity itself. This “definitional” path acts as a threshold barrier, effectively preventing functional shapes from being registered because they cannot meet the statutory definition of a mark.
In the Kenman Kandy case, the Full Federal Court established a significant doctrinal pathway in Australian trade mark law by focusing on a shape’s capacity to distinguish rather than requiring it to be “something extra” added to a product’s inherent form. The court considered a fanciful, bug-like configuration of confectionery and determined that such a shape was inherently adapted to distinguish the applicant’s goods, making it eligible for registration. In trade mark law, being inherently adapted to distinguish means that the sign is not one that other traders would “naturally think of and wish to use” in the ordinary course of their business for their own similar goods. A sign lacks this inherent quality if it serves a utilitarian, ornamental or economic function or if there is a proven competitive need for that specific form to remain available to all participants in the market. This approach essentially absorbs the traditional principle—that a mark must be different from the thing it marks—into the broader inquiry of whether the sign can effectively function as a communicator of trade source in the marketplace. While this “practical” solution avoids difficult metaphysical inquiries into a product’s “inherent form,” it has raised policy concerns that Australian law may now permit the perpetual monopolization of functional or aesthetically pleasing shapes more easily than the laws of the United States or the United Kingdom.
Cases of Non-Graphical Marks
Under Australian law, a trade mark must be capable of graphical representation to be registrable. For non-traditional signs like sounds, scents, and tastes, this requirement ensures the mark is stable, consistent, and predictable, providing a “precise designation of trade origin”. While the sources note that the specific methods of representation—such as using musical notation for sounds—have been a significant point of judicial analysis, the overarching principle is that the representation must allow consumers to clearly perceive and recall the sign as a badge of origin.
Sound marks are expressly included in the statutory definition of a sign under Section 6 of the Act. A landmark example is the European Court of Justice case Shield Mark BV v Joost Kist, which considered applications for the first nine notes of Beethoven’s Für Elise and the sound of a cockerel’s crow. The court held that such sounds are capable of functioning as trade marks because they are not inherently incapable of distinguishing the goods or services of one undertaking from those of another.
Taste marks, or “gustatory” signs, are potentially registrable under the Act’s inclusive definition, though actual legal authority is sparse. In the case of Eli Lilly & Co’s Community Trade Mark Application, an attempt to register an artificial strawberry flavour for pharmaceutical preparations was rejected. The grounds for refusal were that consumers would perceive the taste as a functional way to mask the bitter taste of medicine rather than as a trade mark, and that granting an exclusive right to a taste would harm the public interest in competitive freedom.
Scent marks are also explicitly recognized as signs, though they face significant doctrinal hurdles when the scent is the product itself. A successful example of a “product scent” is found in Re Clarke, where the United States Trade Mark Trial and Appeal Board allowed the registration of a scent used in relation to cotton thread. However, “primary scents” like perfumes are more difficult to register; for instance, an application for the scent of Chanel No 5 was rejected because the fragrance is the “essence of the mark itself” and cannot be legally distinguished from the product it is meant to identify.
Conclusion
In Australian trade mark law, a sign is defined as an act of communication whose legal status depends entirely on its source-distinguishing ability rather than its physical form. While Section 6 provides an inclusive list that encompasses non-traditional signs like colours, shapes, sounds, and scents, these marks must meet the statutory requirement of being inherently adapted to distinguish—meaning they are not forms that other traders would naturally need to use for their own goods. Judicial analysis in cases like Philmac and BP highlights a cautious approach toward colour marks due to “competitive need,” while the Kenman Kandy decision allows for the registration of unique shapes based on their capacity to distinguish. Despite this liberal framework, sensory signs like tastes and scents face significant hurdles, often being rejected if they serve a functional purpose or are considered the “essence” of the product itself.
OpenLegal Services
The best way to ensure that a non-traditional sign—such as a colour, shape, sound, or scent—can be registered as a trade mark is to ensure that it functions clearly as a badge of origin rather than as a functional or decorative feature of the goods. At OpenLegal, our team can assist with assessing whether your proposed sign meets the distinctiveness requirements under the Trade Marks Act 1995 (Cth), helping you position your brand for successful trade mark registration.
To further discuss, please contact us at enquiries@openlegal.com.au or 1300 337 997.
Steven Drk, Intern at OpenLegal.
