Sights and Smells: a New World of Senses in the Field of Non-traditional Trademarks

Introduction

The revised Trademarks Act came into force on June 17, 2019 and brought new waves of changes to the trademark legal landscape in Canada. The Act is now more harmonized with international practices and standard procedures of trademark law by adhering to international treaties and implementing the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice classification) and the Madrid Protocol for trademark applications with the World Intellectual Property Association, allowing access to more than 100 jurisdictions worldwide in a single application.

Non-Traditional Trademarks

To align Canadian trademark law with international standards, the revised Act now recognizes new non-traditional trademark signs, such as colours, three-dimensional shapes, holograms, moving images, modes of packaging goods, sounds, scents, tastes, textures and the positioning of a sign. This amendment opens the door for businesses in the Canadian market to let creativity run free and protect innovative forms of marketing.

Non-traditional trademark applicants must comply with specific requirements for each application, depending on the type of the non-traditional sign. The Canadian Intellectual Property Office (CIPO) set out a practice notice to guide applicants in navigating the filing requirements for such signs. When necessary, applicants may need to provide visual representations of the non-traditional sign(s) in their trademark applications.

How are businesses taking advantage of this shift in trademark eligibility? Below are examples of interesting non-traditional trademarks filed, but not yet registered, in Canada since the revision of the Act:

  • Colour sign: To illustrate how a colour sign may be trademark, Mastercard filed a trademark for the colours red and yellow, described as the exclusive combination of “the colours red and yellow without delineated contours and without any claimed positional relationship”. The colours red and yellow are the background colours of Mastercard’s logo.

Similarly, Interact also filed a colour trademark for the colour Ochre, described as “PANTONE* 124C, PANTONE* 128U, HEX F0B51C”, which is a yellow-orange mix.[1] The Ochre colour is also used as a background colour of Interac’s logo.

If these signs are successfully registered, the use of these colours will no longer be possible in association with the goods and services covered by each trademark.

  • Three dimensional (3D) sign: The 3D trademark may enable further and better protection of trade dress in Canada, given that 3D signs are now specifically provided for in the Act.

Chanel took this opportunity to file a 3D and texture trademark for its iconic Boy bag and Timeless Classic Bag. The Boy bag is described as “a three-dimensional shape and texture of a handbag.” Chanel provided three visual representations of said shape, appearance and texture, including the matelassé type and lined texture, of the handbag consisting of the trademark.

Similarly, Birkenstock filed 3D trademarks for the trade dress of its well-known footwear for numerous models of the Birkenstock sandals.

  • Texture sign: As described above under 3D sign, Chanel filed simultaneously a 3D trademark and a texture trademark for its iconic Boy bag and Timeless Classic Bag, protecting the 3D shape and the matelassé and lined texture of the bags.
  • Hologram sign: There has yet to be a hologram sign filed in Canada.
  • Motion sign: A motion sign is a moving animated image. Hopper Inc. filed a motion sign of the bunny hopping movement which can be found in its software for customized airfare and flight information called Hopper. The motion is described as “the moving image of a running bunny, five positions of which are shown in the design.” A clip of the running bunny accompanies the trademark application.
  • Taste sign: The applicant Endurance Tap Incorporated, filed a taste trademark consisting of “the taste of salted maple syrup with ginger” in relation to its energy gels, energy bars and dissolving powder for its energy drinks.

It is uncertain whether taste signs are attainable for goods and services relating to food and beverages. CIPO will need to determine whether taste signs relating to food and beverages act primarily as functional features and therefore cannot be registered as trademarks.

  • Scent sign: Crayola filed the “Crayon Scent Mark”, describing it as “a unique scent of a pungent, aldehydic fragrance combined with the faint scent of a hydrocarbon wax and an earthy clay”.

Although this mark has yet to be registered, a parallel may be drawn to the “Play-Doh” smell by Hasbro, now registered as a trademark in the United States.

  • A mode of packaging goods sign: An example of this sign is Birks’ filing of the trademark Bell Box, described as “a mode of packaging goods and consists of the way goods are wrapped in a bell shaped box, as depicted in the drawing”. The Bell Box is used to contain jewellery.

Given that these marks have yet to be registered, it will be interesting to follow the scope of protection provided to these non-traditional trademarks and how their enforcement will unfold in the future.


[1] “Ochre & Colour”, Interac Corp, Can No 1982584 (filed 28 August, 2019) formalized.

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Amy Tang

About Amy Tang

Amy Tang is an associate with the Intellectual Property group. She advises and represents clients in connection with intellectual property disputes and drafts proceedings related to copyright, trademark, patent and trade secrets.