Trademarks can protect more than product name

Susan Vogt practises marketing law at the Toronto offices of Gowling, Strathy & Henderson....

Susan Vogt practises marketing law at the Toronto offices of Gowling, Strathy & Henderson.

I have explained the difference between trademarks and copyright so many times, I should tape record it. ‘Trademarking’ has become a colloquial term for intellectual property protection. In law, however, trademarks have a distinct identity.

What clients usually want is protection for an artistic or literary work – a design, a story line, or a radio or television script. These are not, per se, protectable as trademarks. They are, however, protected by copyright – provided they are original. Because copyright arises automatically and copyright registration confers few advantages in Canada, it is generally sufficient to mark original artistic or literary works with a copyright legend: ‘©2000 Famous Author’.

Trademarks, fortunately for trademark lawyers, are much more complicated. I can give you a URL – www.strategis.ic.gc.ca – where you will find complete instructions for registering a trademark in Canada. I do so with the knowledge that the one-page registration document contains more potential pitfalls than most legal forms. It is usually cheaper to retain a trademark lawyer from the start.

Some time ago, I wrote a column about basic trademark principles. As I said at that time, a trademark is always and fundamentally an indicator of origin. It is used to tell consumers and dealers that particular goods or services are made or supplied by a particular party. The trademark Coke, for example, tells consumers that the soft drink was made by the Coca-Cola Company or a licensee. This is intended to guarantee consistency.

Consumers care about trademarks because they want the product labelled Coke to be the same old soft drink they always buy – not some counterfeit version. Manufacturers care about trademarks for exactly the same reason. If they have built a reputation in their brand, they do not want trademark infringers trading on that reputation by selling counterfeit products. Equally, they do not want the value of their trademark damaged by second-rate knock-offs.

If you start with the principle that trademarks function as an indicator of the source of particular goods or services, it is clear that trademarks are not restricted to brand names. Many things perform this identifying function. The three-note NBC chime is a trademark because it tells you which network you are watching. The colour and shape of a pharmaceutical pill can be a trademark if they are distinctive enough to denote the brand-name drug. The shape of a package – for example, the Perrier bottle, or a product’s appearance – for example, the ‘copper-topped’ Duracell battery, are trademarks if they signify that the water and batteries are produced by Perrier and Duracell, respectively.

Why is this important? Because you may be able to protect, through trademark registration, much more than the name of your product. And registered trademarks have clout.

Every week, the Canadian Intellectual Property Office publishes the Trademarks Journal where pending trademark applications are ‘advertised.’ It makes entertaining reading. For one thing, it gives you a preview of the trademarks and line extensions your competitors are planning. More critically, it provides the window of opportunity to prevent registration of a confusing or infringing trademark. Less critically, it demonstrates the infinite and varied possibilities of trademarks. Some recent examples from the Trademarks Journal:

1) Pepperidge Farm has applied to register the shape of its Gold Fish crackers;

2) Labatt has applied to register the blue tab on its beer cans;

3) SmithKline Beecham has applied for the shape of its Tums containers;

4) Phyllis Lei Furumoto has applied to register her signature;

5) A media company has applied for the descriptive phrase ‘The Incredible Birthday Name Contest’;

6) Gap has applied for ‘Khaki-A-Go-Go’;

7) A tire company has applied to register a distinctive tire tread;

8) The Bank of Montreal is awaiting the (tardy) registration of ‘We’re Prepared For Y2K’; and

9) Finova Group has applied to register a three-dimensional pyramid shape.

The limits of trademarks are constantly expanding. There is no reason, in principle, that a perfume, a menu-board, the shape of a chair could not be registered as trademarks – though they might be difficult to define. (I would be thrilled to get client calls about this kind of trademark.)

One final note: When lawyers deal with copyright it is usually in the courts; trademarks, on the other hand, can be cloaked with the substantial protection conferred by registration. Which means that legal proceedings can often be avoided. It is an article of faith with me to avoid litigation. If you’ve ever been involved in intellectual property litigation, you will understand why.

Susan Vogt can be reached by phone at (416) 862-5439 or by e-mail at vogte@gowlings.com