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Thursday November 7, 2019

Trademark Basics: What is a Trademark?

Posted in: Intellectual Property

Canadian trademark practice is evolving every year due to technological advancements in brand marketing and changes in the law itself, whether through legislative amendments to the Trademarks Act or as a result of new judicial interpretations.

One recent example of change: the definition of what is a trademark in Canada was significantly expanded effective June 17, 2019. Several new categories of non-traditional trademarks are now capable of statutory protection from infringement through federal registration.

What it is not

Before we get into the new categories, let’s revisit what a trademark is not. It is not an invention or process; that is called patent law. It is not an artistic, musical, dramatic or literary work; that is called copyright law. People (including lawyers) often confuse these different types of intellectual property and use the words trademark, patent and copyright interchangeably (and incorrectly).

Indication of Source

A trademark is a source identifier. Its primary purpose is to distinguish a seller’s goods and services from those of others. The trademark informs the consumer about the character and quality of the product or service originating from that source.

Trademark law protects consumers from imitators, rogues and trolls who seek to ride the reputation coattails of stronger brands using deceptive and confusingly similar brands.

Trademarks have been used by merchants for centuries to identify and promote their brands. Ancient Egyptians were known to burn words and/or symbols on their livestock 4,000 years ago.

Over time, the practice of “branding” was extended to other goods and their packaging. Non-traditional trademarks such as slogans and jingles began to emerge in various countries. With the advent of computers and the world wide web, digital trademarks have become commonplace.

New Definitions

So, here is the new statutory definition of a trademark: “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 and services from those of others”.

This concept of “signs” to define a trademark is completely novel, so it gets its own broad new definition: a sign “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”.

The use of the word “includes” is important as a catch-all, because it means new types of trademarks may arise in the future and be deemed included in the all-encompassing definition.

Signs, Signs, Everywhere There’s Signs

Let’s review each category of traditional and non-traditional trademarks, together with some recognizable examples:

1. Word:  GOOGLE
2. Personal Name: McDONALD’S
3. Design:  NIKE Swoosh
4. Letter:     W (for hotels)
5. Numeral:  7-11
6. Colour:  Canary Yellow (3-M Post-It Notes)
7. Figurative Element: APPLE Logo
8. 3-D Shape:  KITKAT Chocolate Bar
9. Hologram: MASTERCARD Globe Design
10. Moving Image:  JAMES BOND Gun Barrel Film Sequence
11. Packaging:  COCA-COLA Bottle
12. Sound:  TARZAN Yell
13. Scent: PLAY-DOH Smell
14. Taste:  BUCKLEY’S Cough Syrup
15. Texture:  CHANEL Bag
16. Positioning:  LEVI’S Red Tab

Very few non-traditional marks have been registered so far in Canada, given how recently the law has changed, however, the number of applications filed is certainly going to be on the rise.

The application process for non-traditional marks is complicated and can be costly in comparison to applications for traditional marks.

Certification Marks

The other traditional type of trademark (not included in the examples listed above) is called a Certification Mark. It is used to identify specialized goods and services which meet a prescribed standard of industry or safety, such as WOOLMARK and CSA.

Unlike the other categories of trademarks, its definition was not amended by referring to “signs”. Certification marks do not come up in most trademark practices, but they are included here for completeness.

Combinations of Signs

Combinations of two or more trademark types are possible. A trademark can include both a word and a design, or both a moving image and a sound. One must keep in mind that such artistic aspects of the logo and such musical aspects of the sound mark are also copyrightable works on their own.

Bottom Line

Trademarks identify the goods or services of a business and can become extremely valuable assets. Therefore, it is critical to ensure that trademarks are properly selected, registered and policed to safeguard their inherent economic value. By using the trademark properly and diligently, and by policing its use on a consistent basis, the brand owner can indefinitely preserve the rights and goodwill associated with the trademark at relatively little cost.

If you would like more information about Trademarks, please contact our Trademark Agent Marc Belliveau.

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