In March 2013 the Federal government introduced Bill C-56, the Combating Counterfeit Products Act, to amend the Copyright Act and the Trade-marks Act to add new civil and criminal remedies and enforcement measures to protect copyright and trademark rights and to deter commercial activity involving infringement and counterfeit goods. The Bill would also amend the Trade-marks Act to allow the registration of nontraditional trademarks.

Nontraditional Trademarks

The proposed amendments would permit the registration of various kinds of nontraditional trademarks, such as holograms, moving images (animations), scents, tastes and textures. This broad protection is consistent with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), an international agreement administered by the World Trade Organization. Canada became a party to TRIPS in 1995. Other countries, including United States, have recognized certain nontraditional marks for many years.

The proposed amendments would effectively ratify recent policy changes implemented by the Canadian Intellectual Property Office. In March 2012, CIPO began accepting applications for  registration of sound marks, the first  of which was MGM’s application for registration of its famous roaring lion sound mark. Applications have been filed for registration of other well-known sound  marks, including the Intel Inside musical jingle, the Mac start-up chime, the Tarzan yell and the Sweet Georgia Brown melody (the Harlem Globetrotters’ trademark).

Like a traditional trademark, a nontraditional trademark must be distinctive, which means that the trademark must actually distinguish, or be inherently capable of distinguishing, the goods or services of the trademark owner from the goods and services of other persons. Source identifying distinctiveness is the cardinal requirement of a valid and enforceable trademark. Non-distinctiveness is a ground of opposition to a trademark application, a ground of expungement of a registered trademark, and a defence to an action for trademark infringement.

Nontraditional trademarks are also subject to the functionality doctrine, which provides that a trademark is not registrable if its features are dictated primarily by a utilitarian function, and trademark rights do not prevent a person from using a utilitarian feature embodied in a trademark. The functionality doctrine prevents the misuse of trademark law as a restraint on trade or to usurp or extend patent or industrial design protection.

Recommendation

Businesses may wish to prepare for these proposed changes to the Trade-marks Act by expanding their brands to include nontraditional marks and implementing practices (informed by the experience in other countries) to establish and preserve the distinctiveness of their nontraditional marks.

Author

Bradley J. Freedman 
BFreedman@blg.com
604.640.4129

Expertise

Information Technology