Trademarks – They are a Changing!

Do you think of trademarks (“marks”) only as word marks, logos or icons? If you do, you’ll need to think again. In early 2019, new trademark laws will come into effect and there’s a lot you should be doing now to ensure your brand is prepared for these changes and can benefit from them. 

As every good marketer knows, the purpose of trademarks is to function as a symbol of the source and quality of wares and services, to distinguish those of one company from those of another and thereby make your brand standout and prevent ‘confusion’ between it and another brand in the marketplace. The upcoming changes to the Trademarks Act will expand protection for companies’ marks. And for the first time, you will be able to trademark brand assets like a smell, texture, taste or even a moving image.

Here are some short notes on upcoming key changes to the Trademarks Act:

The Act currently defines a trademark as:

(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,

(there are 3 more subsections which are not set out). While this definition could be interpreted as any "mark", the Federal government was of the view that clarity was needed.

When the changes to this Act are implemented (allegedly in early 2019), a trademark will be defined as:

(a) 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, or (there is 1 more subsection which is not set out)

Sign will be defined as:

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;

This definition of sign will make the type and scope of trademarks to be protected broader including to broaden the non-traditional marks which are capable of protection. It opens protection to a whole new class of marks known as “signs” which can now be protected as trademarks. Companies will be able to file trademark applications for signs such as a smell, a texture, a taste or even a moving image and obtain a Federal trademark registration for them.

This change is important for Canadian companies since they will now have the possibility of registering more types of marks than before. Once registered, these marks can be enforced against other companies' use of such marks.

These changes to the Trademarks Act will be an interesting change for brands and important for brand managers, creative teams and legal council to prepare for.

Learn more at the Canadian Marketing Association’s upcoming event: Future-Proof Your Brand: Trademark Law Changes. Gain Rights to Tastes, Scents, Images and Sources.


About the authors:

Colleen Spring-Zimmerman is a Partner at Fogler Rubinoff LLP
Susan Floyd is Director, Enterprise Marketing Performance at CIBC

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