The TMs They Are A Changin'

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The Canadian Trademarks Act is about to undergo the most dramatic changes in recent history. Canada had not been consistent with some of the international treaties governing trademark practice. The goal was to make Canadian trademarks practice more consistent with those practices in other countries.  Changes include adopting a class system to group use descriptions, a class based fee structure, dropping use requirements from the application process, and new types of trademarks. Some of these changes will make things easier, some will make it more difficult and costly.

This is the first of a series of 7 posts about changes to trademarks coming on June 17, 2019. Subscribe to our Top Ten in Tech Law newsletter to be sure to see them all. 

Change #1: Non-traditional marks.

Registrable trademarks will include more things than were registrable before. They include “… 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”. Traditionally the only things that could be trademarked were words, slogans, 2 dimensional designs, and to a limited extent colour and sound.

What does that mean for you?

Trademarks will be available to protect things that could not protected before. Examples include the scent of a perfume, or the unique taste of a candy. It would not include, though, a scent or taste that is natural to the product. In other words, a trademark could not be obtained for the scent or taste of an apple pie if the good is an apple pie. Things like scents and tastes will no doubt be challenging to describe and enforce. 

Some of these new marks will require proof of distinctiveness. We will explain that in our next post.

If you're concerned that these changes might have an impact on your business, we recommend that you contact your trademark lawyer today or contact us for a no obligation consultation.

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