What you need to know about Canada’s new trademark laws

How the overhauled rules, including the ability to trademark taste, texture and sound, could impact brands and their agencies.

CMA-Trademark

Sweeping changes coming to Canada’s trademark laws this summer are expected to have significant implications for brand managers and their agencies.

The new laws – representing the biggest legislative change for Canadian trademarks in 50 years – come into force on June 17. They include the expanding of the definition of a trademark to include “signs” that distinguish products and services, such as scent, sound, taste, texture, three-dimensional shape and positioning.

The changes will enable companies to “register and protect a broader, more valuable portfolio of trademarks and more fully articulate the elements of their brands,” according to resources distributed by the Canadian Marketing Association during an event examining the changes on Wednesday.

In addition, Canada will become a “first-to-file” jurisdiction, meaning applicants will no longer have to prove that they have actively been using a trademark in order to have it registered. Canada joins other countries in adopting the Nice international classification system, wherein registrants must obtain a trademark in one or more of the 45 classes of goods and services (paying a fee for each), as well as the Madrid Protocol, which will enable them to file applications internationally with the World Intellectual Property Organization.

The changes bring Canada in line with most other countries – with the exception of the U.S., which continues to use a first-to-use system – and stems from trade talks with Europe that began back in 2014, according to Colleen Spring Zimmerman, partner at Fogler & Rubinoff LLP.

Legal experts anticipate that the new system will make it easier for Canadian organizations to register their trademarks internationally. However, it also opens them up to so-called trademark trolls, owners that have been registering a large number of trademarks with the intention of selling them to established brands at a premium. As a result, trademark challenges are expected to increase once the rules come into effect.

Bestlux

Explaining the opportunities and challenges that await brands and their creative partners, Zimmerman offers the hypothetical example of Bestlux, a fictitious company specializing in skincare for women. By expanding into men’s products and seeking to add new trademark protections globally, the company could hypothetically seek trademarks for its unique packaging colours, the faux-leather texture of its bottle caps and the off-centre positioning of the brand name.

In another example, Zimmerman points to IKEA Sweden’s home pregnancy test, which offered discounts to mothers who could prove they were pregnant by peeing on a portion of the print ad. Hypothetically, aspects of that ad could be trademarked in Canada, she says, if it involved the use of a distinct smell, sound or colour. Kellogg’s Raisin Bran, once the only purple box in the cereal aisle, could seek similar protections for the colour of its packaging.

One thing remains unchanged: trademarks need to be original and they need to be able to distinguish the goods and services in question. “They have to be an indicator of source, and they have to bring that customer back and back and back to those goods and services,” says Zimmerman, noting that what constitutes distinctiveness remains highly subjective.

The laws do not specify a degree of differentiation required to obtain a trademark, and questions have been raised around how certain brand elements, such as taste and smell, will be measured, inventoried and rendered publicly searchable.

Throughout the branding process, creatives and their clients will have to consider that a trademark cannot be generic, utilitarian, the name of the goods or the goods themselves. For example, under the new laws, glass-bottle packaging in itself cannot be trademarked, but glass bottles of a distinct shape could.

In preparation, the CMA suggests organizations should conduct an audit of their existing applications and registrations prior to the June 17 implementation.

And going forward, panelists at the event agreed that both brands and agencies will have to revise their branding development processes and consider that the new system is likely to demand additional legal costs, processing time and research. Creative agencies, in particular, should review their agreements with clients to ensure compliance and appropriate ownership of work.

Correction: A previous version of this article misstated that Canada will become a “first-to-use” jurisdiction. Strategy regrets the error.