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Take Advantage of Proposed Changes to Canadian Trade-marks Regulations – Non-Traditional Trade-marks

The Canadian Intellectual Property Office (“CIPO”) recently completed a consultation on proposed revisions to the Canadian Trade-marks Regulations (the “Regulations”). The stated goals of the proposed changes are to streamline and simplify opposition proceedings, and to respond to evolving business and marketing practices and streamline interactions between applicants and CIPO.

Of considerable interest to trademark applicants, the proposed amendments to the Regulations greatly expand the recognized range of subject matter that can be protected by way of a Canadian trademark application. Many readers will be familiar with the fact that sound marks are now registrable in Canada by reason of a recent Federal Court judgment, granted with the consent of CIPO. However, the proposed amendments to the Regulations provide not only for description of trademarks consisting of a sound, but also trademarks consisting of holograms, motion marks, and trademarks applied in a particular position on a three-dimensional object. The proposed amendments to the Regulations are consistent with a draft practice notice on Non-Traditional Marks circulated by CIPO in October 2010, but never formally adopted.

Hologram marks are taking on greater importance in the commercial marketplace in an effort to combat counterfeiting. Motion marks are becoming more and more important with the rise of e-commerce. Notwithstanding the increasing importance of such trademarks to brand owners, Canada has lagged behind its peers in terms of providing protection for such trademarks due to the restrictive interpretation placed on the definition of “trade-mark” in Canadian legislation.

Previously, CIPO considered that the requirement of the Trade-marks Act (the “Act”) that an application include “a drawing of the trade-mark” meant that marks that could not be depicted in a single drawing could not be registered and did not qualify as a “trade-mark” under the definition of the Act. The actual wording of the Act requires that an applicant provide “a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed”. It appears that CIPO has broadened its interpretation of this provision and concluded that the present wording of the Act allows for the protection of non-traditional marks as trademarks, provided that the office is given an accurate representation of the trademark.

According to the terms of the proposed Regulations, for hologram marks, applicants will be required to state that the application is for the registration of a hologram mark, provide a drawing or drawings including one or more views capturing the holographic effect in its entirely, and provide a description of the hologram mark.

In the case of motion marks, applicants will be required to state that the application is for the registration of a motion mark, provide a drawing or drawings containing one image or a series of images depicting movement, and provide a description explaining the movement. Applicants may also provide an electronic representation showing the mark in motion.

In the case of sound marks, CIPO is currently accepting applications for such trademarks. In accordance with a Practice Notice dated 28 March 2012, applicants must state that the application is for the registration of a sound mark, provide a drawing that graphically represents the sound (presumably a sonogram), provide a description of the sound, and provide an electronic recording of the sound. The electronic recording of the sound must be in the form of an MP3 or WAVE file less than 5 MB in size and recorded on a CD or DVD.

Similarly in the case of trademarks consisting of a trademark applied in a particular position on a three-dimensional object, CIPO presently accepts applications for such trademarks and a Practice Notice dealing with three-dimensional trademarks issued 6 December 2000 covers such trademarks.

There is also a proposed provision in the draft Regulations to require the filing of a colour drawing of a trademark for which colour is claimed as a distinctive feature of the mark. Presumably, this means CIPO will now publish trademarks for purposes of opposition in colour. Currently, CIPO can receive colour drawings of a trademark with the application, but applications for regular trademarks are published in black and white.

While the proposed amendments to the Regulations are not in force and there is no clear timeline for their implementation, if CIPO has in fact concluded that non-traditional marks are trademarks under the current version of the legislation, such marks could potentially be registrable now, notwithstanding that the Regulations have not yet been implemented. Indeed, this appears to be the case for sound marks, applications for which are now being accepted by CIPO.


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