A brand name speaks beyond the name of a product or service, and represents the goodwill and reputation that is associated with a business. Since trademarks are the only form of intellectual property that can live on in perpetuity, brand promotion and strategy become critical, especially in this age of the internet, media and social networking.
Brand management today has acquired a meaning of its own, placing heavy reliance on the protection of trademarks, copyrights and licensing the use of these branding elements. Contracts of all types and forms now include a clause dedicated to the manner in which IP may be used, and often mandate that trademarks, corporate names and the like not be used or displayed without prior permission.
The trademark regime plays a crucial role in tapping into the potential in brand management. The Trademarks Act ("Act") in Canada not merely allows for the protection of brand names and associated logos and design features, but also provides mechanisms to enforce rights against those using identical or confusingly similar trademarks.
The Canadian trademarks regime recently underwent an overhaul and a new Act came to force on June 17, 2019. Many of the changes are also expected to impact how brands and trademark portfolios are structured and managed by Canadian entities.
INTRODUCTION OF NEW CATEGORIES OF MARKS
Trademarks traditionally include words, designs (logos) or a combination of the two. The earlier Act also allowed for 3D marks, colour as applied to surface of a 3D object, sound, holograms and moving image marks, although these are less commonly used.
The new Act has expanded these categories to include colours per se, taste, scent and texture marks as well as a combination of these.
In other words, the introduction of the new Act has expanded the realm of trademarks, so that marks are not only reflective of the impression that a mark's sight and sound leave, but can likely involve other human senses. It is very likely that brands using unique shades of colour (e.g. the Cadbury purple which has been a trademark registered in other countries), smells (such as perfumes), texture of goods and other inimitable attributes that are considered as "identifiers" of products will likely be trademark protected.
Having said that, these features must echo "brand recognition" as opposed to utility or other functionalities. It is also possible that some of these marks will have to establish higher than usual benchmarks in order to be registered. One of the standards that applicants may need to establish is "acquired distinctiveness" in the marketplace, i.e. show that the mark is reflective of the "average consumer's association with the goods/services."
While the introduction of these new categories is exciting, it may also imply that brand owners will adopt renewed strategy to explore, use and market these unique selling attributes, so that consumers do in fact associate their products with these features. This may be an exciting opportunity for corporate branding and marketing executives, who can now go beyond the look of a mark, to incorporate the entire "look and feel" and beyond, in a branding exercise.
ELIMINATION OF THE "USE CRITERIA"
The trademarks regime in Canada, prior to the recent changes, required applicants of trademarks to designate whether their proposed mark was "in use" or "proposed to be used." Under the new regime, this designation ("Use Criteria") is not required at the time of filing the mark.
While this may seem like a very simple "check the box" criteria being eliminated, the ramifications on legal advice being rendered to marketing and design teams is impacted. Under the prior regime, the Use Criteria being disclosed allowed trademark practitioners to provide a better analysis of the marks available for registration and a more definitive insight to the possible obstacles in the registration of marks. However, this Use Criteria aspect now not being listed can make such an evaluation somewhat skewed. Although this criteria has been eliminated, a mark must still be used. Non-use can lead to the mark being expunged from the trademarks register, and in certain instances, on the Trademark Office's own accord.
The elimination of the Use Criteria is also expected to crowd the trademarks register since it is expected that companies will register any and all trademarks. It is expected that companies may consider applying for multiple variations, phonetic similars, marks to be used in allied industries and even marks that are similar but non-identical to their competition's mark.
One consideration that may offset this trend might be the significant increase in the filing fees. The new Act, amongst other critical changes, has also introduced bad faith as a ground in contentious proceedings, thus acting as a deterrent to trademark trolls and competitors from simply registering marks to block the register.
MADRID SYSTEM OF INTERNATIONAL FILING
The recent changes to the Canadian trademark system has also led to Canada's implementation of the Madrid System of International Filing. The Madrid System is a centralized process and an alternative method for trademark owners to secure registrations across various countries that are members of the Madrid System. After June 17, 2019, Canadian trademark right holders may be able to file applications across the world through a single window system, and international trademark applicants will be able to designate Canada in their Madrid International Registration applications.
While the Madrid System offers many advantages, certain considerations will still need to be factored in. One of the major considerations may be how local law in a designated country may apply as well as legal fees in each jurisdiction. However, since intellectual property is largely mandated by international treaties and convention, many countries implement a similar system, and some of the obvious hurdles can be avoided early on through due diligence in a jurisdiction of interest.
The Madrid System is expected to be particularly advantageous for brands, industries and corporations having a global presence
IMPACT ON UNIVERSITIES AND EDUCATIONAL INSTITUTIONS
Under the Act, universities (as well as public authorities) may adopt and register their badge, crest, emblem or mark as an "Official Mark". Official Marks are considered to be different from trademarks. The unique feature of Official Marks is that they are registered across all 45 classes of goods and services, thus lending them extraordinary protection. These marks also need not be renewed.
Since Canadian universities are becoming more international than ever before, there may be interest in protecting their marks in foreign jurisdictions as well. However, since the concept of Official Marks is unique to Canada, it cannot be used as a basis for an international registration under the Madrid System. However, existing (and future) Official Marks, subject to local law, may be applied for trademark registration in various jurisdictions individually.
In order to take advantage of the Madrid System, educational institutions may consider applying to register their new marks as a "trademark" in Canada (as opposed to an Official Mark). Although this does not offer some of the unique advantages associated with Official Marks, the international reach of the Madrid System can bolster their global presence.
Having internationally registered trademarks may likely result in increased collaboration of Canadian educational institutions with foreign institutions, offering legitimately licensed courses and possibly enhanced exchange programs. In addition, foreign registrations potentially deter local institutions from using confusingly similar names, or using advertising/ marketing strategies that represent an affiliation with Canadian educational institutions, when none may exist.
The Canadian trademarks regime is likely to require brand owners as well as their legal counsel to look at branding and trademark strategy from a renewed lens. While many of the changes on the face of it may appear administrative, there is more than meets the eye. With the changes being so new and drastic, brand owners, marketing personnel and lawyers will have to work together to ensure that a brand does indeed last forever and a day
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