It was with great interest that we noted the recent reporting of the decision of the Fifth Circuit Court of the US District Court in New York Pizzeria, Inc. v Syal et al.

The case centred around a claim of trade mark infringement after NYPI's former President allegedly conspired to create a copycat restaurant using the recipes, suppliers and internal documents of NYPI. NYPI claimed that its pizza flavour was distinctive, arguing that 'the flavour of its Italian food and the way in which it plates its baked ziti and chicken and eggplant parmesan dishes are entitled to trademark protection'.

In dismissing the claim, Judge Gregg Costa noted:

'As with colours, it is unlikely that flavours can ever be inherently distinctive, because they do not automatically suggest a product's source.'

He went on to observe that 'functional product features are not protectable'.

On this second point, it is interesting to note that the test for distinctiveness in Australia is whether or not other traders, being actuated only by proper motives, would think of the mark and desire to use it in respect of their own similar goods or services in any manner which would infringe a trade mark granted in respect of it. Therefore, this raises the hypothetical question as to whether, in Australia, the inherent capacity of a taste trade mark to distinguish depends on the desirability of the flavour?

For example, if the trade mark application was for a rotten egg and month-old-salmon flavoured pizza, it would still be true to say that the trade mark is functional because it produces a rotten egg and month-old-salmon flavoured pizza. However, would other traders, without improper motive, legitimately desire to use such an obviously disgusting flavour in respect of their own pizzas?  Hopefully not!

Whilst the pizza war raised a chuckle throughout the IP community, the case does serve as a useful reminder to companies that the type of trade marks for which registered protection can be sought, has expanded greatly in recent years.

Traditionally, these types of trade marks have been known as 'non-traditional trade marks' (if that statement make any sense), and have included colour, sound, scent and shape - although the large number of registrations in Australia in respect of colour and shape suggests that they should no longer be considered non-traditional marks. For example, we note the recent acceptance of an application for the sound 'of a fictitious character saying the word Simples! followed by a squeaking sound such as might be expected to be made by a Meerkat or other small animal as provided in the sound file or musical score attached to the application form' - (Application No. 1533136 in the name of BGL Group Limited, which you may recognise from the popular television commercials for an insurance comparison website).

In the Australian Trade Marks Act 1995, a trade mark is defined as a sign used to distinguish goods or services provided in the course of trade, from the goods or services provided by another person.  What constitutes a sign is then defined in section 6 of the Act, although the definition is a non-exhaustive definition.

The changing ways in which companies advertise and market their goods, particularly in electronic media, mean that sounds and moving images are often used as 'badges of origin'. As a result, signs which are not specifically included in the section 6 definition are already forming the basis for trade mark applications in Australia. These types of signs include texture/feel, holograms, movement marks, and indeed, taste.

As noted in the US pizza case, securing registration for some types of trade marks, particularly taste and texture/feel marks, may be difficult in circumstances where the mark can be said to serve some functional purpose. However, there is no difference in the way in which non-traditional trade marks are examined, nor is there any difference in the test for inherent distinctiveness. The only difference between applications for traditional and non-traditional marks arises as a result of the statutory requirement that the trade mark be capable of being represented graphically, which necessitates an additional step in the filing process. In the case of sounds marks, this may include a musical score or a written description of the sound. In the case of a moving image mark, this may include a video file and/or individual images of each movement within the mark.

As companies continue to invest in new ways to develop brands and marks to market and promote their goods and services, it is important that the investment be protected by securing registered trade mark for these new marks. Therefore, companies should consider seeking protection for types of marks it previously considered incapable of protecting – we just wouldn't recommend starting with a rotten egg and month-old salmon pizza flavour.