Frank Sciacca had a puzzle to solve.
The ecologically-grown bananas he and his wife, Dianne, had grown on their farm had a great deal going for them. They had been farmed under an eco-protocol, in chemical-free soil, with minimum use of fertilizer (to allow a more natural-growing cycle) the result being an eco-friendly banana that generally has more flavour that traditionally grown bananas.
Frank and Dianne knew of all this. The challenge they faced was how to get the message across to consumers, particularly, as grocery shoppers tend to shop in a hurry, often, without giving too much consideration to the tiny labels on fruit. What could they do to show consumers, at a glance, that these bananas are different?
In what may have been one of his more creative moments, Frank dipped some bananas in green or blue paint so that it just covered their tips, placed them in a bowl and stood back to appraise his work. Not bad, he thought. But it needed something more.
A few days later, Frank was drinking a beer with a friend who, building on the idea of red paint, suggested he try and dip his bananas in coloured food grade wax of the type traditionally used for cheeses.
An idea was born.
The red wax tip was a great success. So much so that people who do their own grocery shopping are likely to be familiar with the wax-tipped bananas that scream for attention on grocery shelves.
But Frank and Dianne didn’t stop there.
The red wax tip is a great idea and great ideas need to be protected.
Recognising this, they sought advice from a trade mark attorney, who suggested that they register the red wax tip as a trade mark. This may come as a surprise to some people as trade marks are traditionally associated with brand names and logos, something two-dimensional that can be reduced to paper. While once, this may have been the case, changes to Australia's trade marks laws that took effect in 1996 allow companies to protect shapes, sounds, colours, scents and aspects of packaging as trade marks. In reality, anything distinctive was always capable of being registered as a trade mark, but the Trade Marks Office was very reluctant to let anything other than words or logos, pictures and drawings become registered. So the law was updated to clarify the situation.
Getting a trade mark for the red wax tip
On 12th April 2000, Frank and Dianne applied, in the name of their company, Fada Pty Ltd, to register the red wax tip as a trade mark for bananas.
As trade mark registration gives the owner the exclusive right to use the mark for the goods or services for which it is registered, the Trade Marks Office has a policy of examining all trade mark applications carefully to avoid giving monopoly rights over trade marks that other people might have a legitimate need to use for their own goods or services.
So Frank and Dianne had to prove that their trade mark, the red wax tip applied to a banana distinguished their bananas from those of other farmers.
They submitted evidence of use such as sales figures, proof of marketing and promotional activities, statutory declarations from government departments as well as people in the fruit and vegetable industry who could verify that, to them, the red wax tip identified Fada Pty Ltd’s eco-bananas.
Look for the distinctive red tip – educating consumers about your trade mark
The fact that they had, for some time, been educating consumers to “Look for the distinctive red tip” to identify their bananas, being the statement they had been using on the website further boosted their case.
They later got trade mark registrations for other coloured wax tips applied bananas.
However, not everyone has been so lucky.
Pretty pink pot owner not as lucky
For example, a company by the name of Flower Carpet Pty Ltd could not convince the Trade Marks Office to register the colour pink applied to pots containing rose plants, despite six years of quite extensive use and having promoted its plants as “The rose in the pink pot”.
Even though Flower Carpet had provided evidence that pink not normally used colour for rose pots, the Trade Marks Office said no.
Factors they considered included:
The fact that plants are not infrequently sold in brightly coloured, decorative pots, including pink (for example, for “pink cone” flowers);
The colours enhance the appeal of the product and are sometimes designed to match the plants they contain;
in light of the above, other traders have a competitive need to present their plants, including roses, in coloured pots and therefore the pink plant pot was not inherently adapted to distinguish Flower Carpet’s plants.
Pink needed to be used alone
The evidence also showed that the applicant heavily promoted its plants under the brand FLOWER CARPET, which was stamped onto the pink pots, and therefore she was unable to determine the extent to which consumers would identify its plants by the colour pink alone given it was always with the brand name.
The message
These real life stories demonstrate that the marketing strategies you employ can have a direct influence on whether you can get trade mark registration.
They also show that trade mark protection is not just for big companies.
If have a good idea for a brand, whether it’s a name, image, shape, colour or aspect of packaging, it is important to explore the best method that you can protect it at an early stage.
Leaving it too long can lead to copycat brands on the market, which can be harder to stop if all you have is an unregistered trade mark.
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