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 June 17th 2019, the definition of "trademark" in the Act was amended to recite "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".3
"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, Deere & Company (the manufacturer of John Deere tractors) has applied to register green and yellow as a colour trademark (Canadian Application No. 1900062). Grupo Bimbo, S.A.B. de C.V., better known as the manufacturer of the Takis corn snack, has applied to register the 3D shape of a rolled-up taco shell as a three-dimensional shape trademark (Canadian Application No. 1978346). Exxon Mobil Corporation has successfully registered the design of its fuel station canopy as a positioning of a sign trademark (Canadian Registration No. TMA1110283). These examples show that, just like word and design trademarks, NTTMs can be powerful indicators of source that elicit a strong association with particular goods and services.
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
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 Canada in respect of its goods and services.9 Furthermore, initiating a section 45 proceeding requires the registrant to prove use of the impugned trademark.10
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.
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 USA though, there is a heavy burden placed on applicants wanting to register taste and scent trademarks. The US Trademark Manual of Examining Procedure states that "(t)he amount of evidence required to establish that a scent or fragrance functions as a mark is substantial" and that "just as with a scent or fragrance, a flavor can never be inherently distinctive because it is generally seen as a characteristic of the goods".14 Should CIPO and/or Canadian courts take a similar position, it will be difficult for owners of these types of NTTMs to register their marks.
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.
1. Trademarks Act, RSC 1985, c T-13.
2. Trademarks Regulations, SOR/2018-227.
3. Trademarks Act, RSC 1985, c T-13, s 2.
5. Trademarks Act, RSC 1985, c T-13, s 30(2)(c).
6. Trademarks Regulations, SOR/2018-227, s 30.
7. Canada, Canadian Intellectual Property Office, Trademarks Examination Manual, 2.4.10 Non-traditional trademarks.
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. United States. Patent and Trademark Office, Trademark Manual of Examining Procedure (TMEP), 1202.13 Scent, Fragrance, or Flavor.
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.