The definition of a "trademark" in the Trademarks Act is of fundamental importance. The new definition of "trademark" provides that a "trademark" means
a) a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or
b) a certification mark.
This definition incorporates the term "sign" which includes "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."
Because of the expanded definition, applications can now be submitted for non-traditional trademarks consisting of 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.
Reference to a "proposed trade-mark" has been removed from the Act since there is no longer a requirement to specify the filing grounds in an application and use is not required to file. The term "distinguishing guise" has also been removed. An application for such a mark will now be included within the concept of "a three-dimensional shape."
The definition is broad enough to include both manufacturers' marks and distributors' marks. A trademark may become known to consumers through the involvement of the distributor when the manufacturer is not known. A typical example of a distributor's mark is the private label offerings sold to consumers by numerous retailers.
Nothing in the Act prevents a slogan or a tagline from being used and registered as a trademark. However, the slogan must be used as a "trademark" and satisfy the requirements of section 4 of the Act relating to "use".
While these are positive changes there is a catch. Previously examiners could not consider the distinctiveness of the applied-for mark. Now under the amended Act, an examiner can refuse an application if the mark is not distinctive. If the examiner's preliminary view is that the mark is not inherently distinctive the applicant must furnish the examiner with evidence establishing that the trademark is distinctive at its filing date. In addition, there is an automatic requirement to file such evidence if the trademark consists exclusively or primarily of a three-dimensional shape of any of the goods applied for, a hologram, a moving image, the packaging of any of the goods applied for, a mode of packaging goods, a sound, a scent, a taste or a texture.
The requirement to file evidence can create potential problems for an applicant since it can be relatively time-consuming and expensive to gather such evidence and prepare affidavits. In addition, if the mark has not been used it will not likely be possible to obtain such evidence.
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