Most of us are familiar with traditional trademarks comprising words and designs. Many businesses now recognize, however, the growing importance of so-called non-traditional trademarks, which are now registrable pursuant to recent amendments made to the Canadian Trademarks Act ("the Act")1 and Trademarks Regulations ("the Regulations").2
What Are Non-Traditional Trademarks?
On
"Sign" is itself defined in the Act as including "a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign".4 The types of signs listed after "a numeral" are generally referred to as non-traditional trademarks ("NTTMs").
More than just a mere legal curiosity, NTTMs can be powerful trademarks. By way of example,
Applying for and Registering Non-Traditional Trademarks
The Act requires all trademark applications to include "a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements".5 The Regulations prescribe requirements for certain types of NTTMs,6 and the Canadian Trademarks Examination Manual7 summarizes the application content requirements for NTTMs.
In addition to the above requirements, certain types of NTTMs require proof that the mark is distinctive at the time of filing, namely: colour, 3D shape, mode of packaging goods, sound, scent, taste, and texture trademarks.8
Considerations
In addition to the requirements above, there are a number of potential issues and considerations associated with NTTMs.
Demonstrating Use of NTTMs for Goods
The first issue is proving use for NTTMs. The concept of "use" appears throughout the Act. For example, section 19 grants owners of registered trademarks the exclusive right to use that trademark throughout
The Act contains a deeming provision for use of a trademark in association with goods, stipulating that a trademark is deemed to be used in association with goods if "at the time of the transfer of the property in or possession of the goods... it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods".11
However, this deeming provision is less helpful for certain types of NTTMs. For example, taste and scent trademarks cannot be "marked on" the goods or their packaging, like traditional trademarks. Deemed use can therefore only be shown if the scent or taste is "associated with" the goods at the time of transfer. Many types of goods cannot be smelled prior to purchasing or taking possession of them, and it is rare that goods can be tasted at that time, so one may not be able to associate taste and/or smell with a particular good at the time of purchase or transfer of possession. Proving use in association with goods for certain types of NTTMs is therefore a potential point of uncertainty.
Demonstrating Distinctiveness
The second potential problem associated with NTTMs is proving distinctiveness. In certain circumstances, the Act requires proof that a trademark was distinctive at the time the application was filed.12 There are two kinds of distinctiveness under Canadian trademark law: inherent distinctiveness, and acquired distinctiveness (also called distinctiveness through use or secondary meaning).
With respect to NTTMs specifically, paragraphs 32(1)(c) and (d) of the Act require an applicant to submit any evidence required by an examiner to prove that their NTTM has acquired distinctiveness at the date the application was filed. For the NTTMs to which paras. 32(1)(c) and (d) apply, applicants are not able to argue that their NTTM is inherently distinctive to overcome the requirement to submit evidence, and must therefore provide enough evidence to prove acquired distinctiveness. This may be difficult for owners of NTTMs that haven't used their NTTM enough to acquire distinctiveness.
The Registrability of Certain Types of NTTMs
In addition to the above considerations, it is also an open question whether taste and smell trademarks are even registrable.
Pursuant to s. 12(2) of the Act, a trademark is not registrable if "its features are dictated primarily for a utilitarian function".13 Based on applications submitted to the Canadian Intellectual Property Office (CIPO) thus far, the food and beverage industry appears to be particularly interested in taste and smell trademarks. A strong argument could be made that taste and smell trademarks, specifically in association with goods that can be consumed, are nearly always utilitarian features of those goods and therefore not registrable.
CIPO's stance on the registrability of taste and smell trademarks remains to be seen, as very few taste or smell trademarks have been examined as of the date of writing this article. Looking to the
NTTMs have the potential to form part of a novel and valuable branding strategy. Given the recent changes to the law surrounding NTTMs though, their path to registration and the mechanics of their enforcement and protection remains to be seen.
Footnotes
1. Trademarks Act, RSC 1985, c T-13.
2. Trademarks Regulations, SOR/2018-227.
3. Trademarks Act, RSC 1985, c T-13, s 2.
4. Ibid.
5. Trademarks Act, RSC 1985, c T-13, s 30(2)(c).
6. Trademarks Regulations, SOR/2018-227, s 30.
7.
8. Trademarks Act, RSC 1985, c T-13, s 32(1)(c) and (d).
9. Trademarks Act, RSC 1985, c T-13, s 19.
10. Trademarks Act, RSC 1985, c T-13, s 45.
11. Trademarks Act, RSC 1985, c T-13, s 4(1).
12. Trademarks Act, RSC 1985, c T-13, s 32.
13. Trademarks Act, RSC 1985, c T-13, s 12(2).
14.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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