Canada: Opening the door to broader trade dress protection

Major amendments to Canada’s trademark law have been passed and will be implemented in the near future, possibly as soon as late 2015. The changes will broaden the definition of a ‘trademark’ and make it possible to protect a broader range of trade dress indicia, as well as non-traditional marks such as scents, tastes and textures. At the same time, new grounds of examination will be introduced that could pose obstacles to the registration of certain types of mark that are currently more easily protectable.

In view of these amendments, brand owners should consider reviewing their portfolios of unregistered trade dress marks with a view to identifying marks for which registration should be sought, either before or after the entry into force of the amendments, depending on the nature of the marks.

The term ‘trade dress’ has traditionally been understood to refer to characteristics of the visual appearance of a product or its packaging that signify its source to consumers. The design of a building or layout of a store can signify the source of services and has been held to be a form of trade dress. Other indicia can also signify source and it is arguable that non-traditional marks can be included in the definition of ‘trade dress’. Think, for example, of the effect on consumers of retailers using signature scents or music in stores.

Some forms of trade dress are protectable under the Trademarks Act, such as colour applied to particular shapes and three-dimensional (3D) marks. Three-dimensional marks are protectable (if they are not primarily functional) as either regular marks or ‘distinguishing guises’, and will fall into the latter category if they consist of the “shaping of wares or their containers” or “a mode of wrapping or packaging wares”. Sound marks are also now registrable in Canada. Certain forms of trade dress can be protected under the Industrial Design Act, as discussed below.

Bill C-31

Bill C-31 – an omnibus budget bill amending dozens of statutes – passed into law on June 19 2014. The bill’s amendments to the Trademarks Act are the most significant changes to Canada’s trademark system in over 60 years and introduce provisions which:

• eliminate use of a trademark as a registration requirement;
• remove the necessity of identifying filing grounds or filing a declaration of use;
• expand the definition of a ‘trademark’;
• permit the division of trademark applications;
• adopt the Nice Classification system;
• shorten the registration term from 15 years to 10; and
• introduce new examination and opposition grounds.

The amendments to the Trademarks Act have not yet come into force and amendments to the Trademarks Regulations have not been completed. Based on current predictions from the Trademarks Office, the amendments are unlikely to be implemented before late 2015 or early 2016. Among the amendments that are of particular relevance to owners of unregistered trade dress indicia, colour marks and non-traditional marks is the expanded definition of ‘trademark’.

Expanded definition

The implementation of Bill C-31 will broaden the scope of what can be protected as a trademark. The definition of the term will be broadened from referencing marks used to distinguish wares and services to signs or combinations of signs used to or proposed to be used to distinguish wares and services. Currently, a ‘trademark’ is defined in the act as a mark that is used by a person for the purpose of distinguishing wares and services, a certification mark, a distinguishing guise or a proposed trademark. The amended act will define a ‘trademark’ as a sign or combination of signs, or a certification mark. The term ‘sign’ will further be defined as “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 current act has been interpreted as prohibiting the registration of marks that cannot be depicted visually. Currently, holograms, moving images, scents, tastes, textures and marks that consist solely of colour are not considered registrable trademarks.

With the expanded definition of ‘trademark’, we are likely to see a proliferation of applications for aspects of trade dress that have previously been unregistrable. That said, the expanded examination for distinctiveness and functionality may pose an obstacle to those wishing to take advantage of this broader definition.

New examination grounds

Under the amended act, a mark will not be registrable if its features are primarily utilitarian in relation to the goods or services in association with which it is used or proposed to be used.

The prohibition against utilitarian functionality has long applied to distinguishing guises. The amended act contains no special provisions relating to distinguishing guises. Instead, the doctrine of utilitarian function will apply to all trademarks. This stipulates that a trademark will not be registrable if it is primarily functional. Examples of the application of this doctrine in the context of distinguishing guises include the studs on the top surface of LEGO building blocks and a triple-headed rotary electric head assembly, both of which were held to be primarily functional.

Applicants will also be required to furnish the Trademarks Office with any evidence that the office may require to establish that a trademark is distinctive as of the filing date of the application for registration. Circumstances in which such evidence will be required include the following:

• The office’s preliminary view is that the trademark is not inherently distinctive.
• The trademark consists exclusively of a single colour or a combination of colours without delineated contours.
• The trademark consists exclusively or primarily of one or more of the following signs:
• the 3D shape of any of the goods specified in the application or of an integral part or the packaging of any of those goods;
• a mode of packaging goods;
• a sound;
• a scent;
• a taste;
• a texture; or
• any other prescribed sign.

Marks of possibly low inherent distinctiveness that are now registrable – including marks consisting of numbers, letters not forming words, punctuation marks, colour and shape combinations and sound marks – may not be registrable under the amended act unless evidence of distinctiveness in Canada is filed. These are the marks that brand owners should consider seeking protection for in Canada as soon as possible, with a view to having applications allowed before the amended act comes into force.

Sound marks are the only non-traditional marks that are currently registrable in Canada and it is expected that it will become more difficult to secure a registration for these marks under the amended act. Currently, a sound mark that is considered to be functional and/or clearly descriptive or deceptively misdescriptive will be objected to under Section 12(1)(b) of the Trademarks Act. However, such an objection can be overcome by filing evidence showing that the sound mark has acquired distinctiveness. Under the amended act, applicants for sound marks will be required to file evidence of acquired distinctiveness as a matter of course, and not just where the mark is considered functional, descriptive or misdescriptive. Further, it appears that under the amended act, applicants will be unable to overcome functionality objections with evidence of acquired distinctiveness.

Strategies for dealing with distinctiveness requirement

Bill C-31 does not amend the Industrial Design Act and industrial design protection should continue to be an option for protecting certain kinds of mark that might be barred from registration on distinctiveness grounds. Securing an industrial design registration will provide for a 10-year monopoly during which trademark distinctiveness can be acquired. Once acquired distinctiveness can be shown, consideration could be given to applying to register the design as a trademark.

The Industrial Design Act provides for the registration of designs that consist of or incorporate “features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye”. In order to qualify for registration as an industrial design, a design must be original and must not be identical to – or so similar as to be confused with – a registered design. As with distinguishing guises currently, and all trademarks under the amended act, the doctrine of utilitarian function applies, but with a higher threshold. Industrial design registration does not protect “features applied to a useful article that are dictated solely by a utilitarian function of the article” or “any method or principle of manufacture or construction”.

Industrial design protection will be available only if the application to register the design is filed within one year of publication or public disclosure of the design. An industrial design registration grants the owner the exclusive right to apply the registered design to any article in respect of which the design is registered throughout Canada and the right to prevent another from making, importing for the purpose of trade or business, selling, renting or offering or exposing for sale or rent any article in respect of which the design is registered and to which the registered design (or a design that does not differ from this substantially) is applied.

Industrial design protection and trademark protection are not mutually exclusive. Thus, a design that has already enjoyed protection as an industrial design can be registered as a trademark if it fits within the constraints of the Trademarks Act. The distinctiveness acquired during the 10-year monopoly afforded by an industrial design registration can then be relied on in seeking a trademark registration.

The effects on brand owners of the amendments to the Trademarks Act in Bill C-31 will be wide ranging and varied, but the expanded definition of ‘trademark’ should prove a boon. The difficulties posed by the more restrictive examination practice are likely to be outweighed by the provision of a regime for protecting hitherto unregistrable aspects of trade dress and other non-traditional marks. Attention to timing and the strategies discussed above should allow brand owners to maximise the scope of protection for these marks.

Brigitte Chan
Partner
[email protected]

Brigitte Chan is a partner with Bereskin & Parr LLP and a member of the trademarks practice group. Her practice focuses on trademark prosecution, licensing and enforcement, as well as copyright, domain name and related Internet matters.

Jonathan Burkinshaw
Associate
[email protected]

Jonathan Burkinshaw is an associate at Bereskin & Parr LLP and a member of the trademarks practice group. His practice focuses on the clearance, registration and enforcement of trademark rights.