Canada Opens Up to Registration of Nontraditional Trademarks

Vol. 5 No. 2

By

Hung Nguyen is a partner at Deeth Williams Wall LLP in Toronto, Ontario. His practice specializes on the clearance, prosecution, enforcement, and licensing of trademarks. He can be reached at hnguyen@dww.com. Adam Lis is an associate at the same firm. He practices intellectual property and intellectual technology law with a focus on litigation. He can be reached at alis@dww.com.

Canadian trademark law has recently undergone some new developments related to the recognition of nontraditional trademarks. The most significant of these developments occurred in March 2012, when the Federal Court of Canada issued an order on consent from the Canadian Trade-marks Office (Office) requiring that the Office approve a trademark application filed by MGM for the sound of a lion’s roar. MGM’s mark was the first sound trademark approved by the Office in over 20 years. Shortly prior to MGM’s sound mark being approved, the Office proposed amendments to Canada’s Trade-mark Regulations in February 2012, which would allow for the registration of hologram, sound, and motion trademarks.

These recent developments are a drastic change from the Office’s previous stance that only visual marks could be registered as trademarks. If Canada implements its proposed regulatory amendments and continues to recognize other types of nonvisual trademarks, it would harmonize Canada’s trademark practices with many other countries, including the United States, which has for decades allowed for the registration of nonvisual trademarks.

Over the past two decades, there has been a global trend to recognize nontraditional trademarks. A traditional trademark is a two-dimensional element such as a word, phrase, logo, image, or design, or a combination of these elements. Nontraditional trademarks are other types of marks, such as sound, scent, motion, hologram, shape, touch, and taste marks. As companies continue to become more sophisticated and tech-savvy, the use of nontraditional trademarks has become more common. Proponents of nontraditional trademark recognition argue that countries should adapt their trademark laws and practices to allow new forms of trademarks to be protected to respond to global trends in market and brand strategy. They believe that the positive effects of allowing companies to protect nontraditional marks outweigh the “trademark” issues often associated with same, such as affixation, graphic representation, enforceability, functionality, nondistinctiveness, descriptiveness, and lack of source identifying function.

The global trend to protect nontraditional trademarks has been reflected in changes to both trademark law and trademark practice in many countries. Most countries have adapted their trademark laws and practices to allow for the protection of at least some types of nontraditional marks. Shape, sound, and color marks are three of the more frequently recognized types of nontraditional trademarks.

Countries have taken one of two approaches to recognize nontraditional trademarks. Most countries, including the United States,1 the United Kingdom,2 and the European Union,3 have interpreted the existing definition of a trademark in their legislation to include nontraditional trademarks, even though they are not specifically listed within that definition. Other countries, including Australia,4 France,5 and Germany,6 have amended the definition of a trademark in their trademark legislation to explicitly list the nontraditional trademarks that they recognize.

Canada and the United States have been on opposite ends when it comes to countries that have adapted their trademark laws and practices to recognize nontraditional marks. The United States was one of the first countries to recognize various types of nontraditional marks. Though Canada has amended its trademark laws and practices to allow for the protection of shape and color marks, it has maintained rigid in refusing to recognize other types of nontraditional trademarks.

As mentioned, the United States recognizes nontraditional trademarks by interpreting its existing definition of trademark in a broad and expansive manner. The Lanham Act defines “trademark” as “any word, name, symbol, or device, or any combinations thereof—(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this [Act].”7 This definition neither includes nor excludes nontraditional trademarks. In Qualitex Co. v. Jacobson Products Co.,8 the U.S. Supreme Court held that the definition of trademark in the Lanham Act should be interpreted in a broad sense.9 In reaching its decision, the Supreme Court noted that U.S. Congress had amended the Lanham Act in 1988 to purposely leave the definition of trademark broad and nonspecific.10

As a consequence of Qualitex, U.S. courts have taken a broad and liberal approach when deciding whether the definition of trademark includes other types of nontraditional marks. Based on this approach, it is possible for any nontraditional trademark to qualify as a trademark if it meets all other requirements for a trademark, such as nonfunctionality, nondescriptiveness, distinctiveness, and source identification.

In contrast, Canada has been very restrictive in its approach to nontraditional trademark recognition, even though its statutory definition of a trademark is similar to that of the United States. Canada’s Trade-marks Act defines “trade-mark” as “(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others, (b) a certification mark, (c) a distinguishing guise, or (d) a proposed trade-mark.”11 The term “mark” is not defined by the Trade-marks Act. Canadian courts have not taken the same liberal approach as U.S. courts have when interpreting the Canadian definition.

However, to be fair, Canadian courts have had very little opportunity to consider the issue of nontraditional marks. There is only one Canadian case that relates to nontraditional marks. It is Playboy Enterprises Inc. v. Germaine (No. 1),12 a 1987 Federal Court of Canada (Trial Division) case. In Playboy, the Federal Court of Canada considered whether a verbal description could qualify as a trademark. In his decision, Justice Pinard stated, “I am of the opinion that use of verbal description is not use of a trade-mark within the meaning of the Trade-marks Act. A ‘mark’ must be something that can be represented visually.”13 Justice Pinard’s comment that a mark must be something that can be represented visually has had a significant effect on Canada’s trademark practices. The Playboy decision has been regularly relied upon by the Canadian Trade-marks Office in refusing trademark applications for nonvisual trademarks.

In addition to the Playboy decision, the Office has often cited the Canadian statutory requirement for applicants to submit an accurate drawing of any trademark that is not a word or combination of words, as a reason for refusing trademark applications for nonvisual trademarks.14 The Office has taken a strict stance when assessing whether this requirement is met. While the United States also requires applicants to submit a clear drawing of the mark, the U.S. Trademark Manual of Examining Procedure (TMEP) exempts sound, scent, or other nonvisual marks from this requirement.15

Sound Marks

Sound marks have been recognized in the United States as trademarks for many years. In 1950, the first sound trademark was registered in the United States when NBC successfully registered the chimes that it plays on its radio and television broadcasts. To date, the United States has approved several hundred sound trademarks. Some of the more well-known registered sound marks include NBC’s chimes, MGM’s lion’s roar, Intel’s five-note sequence for its Pentium processor, and the Harlem Globetrotters’ theme song “Sweet Georgia Brown.”

To register a sound trademark in the United States, applicants must meet the same trademark requirements as a traditional trademark. The sound must be distinctive, it must not be functional, it must not be descriptive, and it must have a source identifying function. Many commentators have speculated that only hundreds of sound trademarks have been registered in the United States because of the difficulties that companies have in meeting these registration requirements.

One of the most widely known failed attempts to register a sound trademark in the United States is Harley-Davidson’s application for the exhaust sound of its V-twin, common crankpin motorcycle engine. The Harley-Davidson application illustrates some of the difficulties that sound marks have in meeting the U.S. trademark requirements. During the application process, nine competitors opposed the Harley-Davidson application. The competitors argued that the applied-for sound mark was not distinctive, as the competitors had motorcycles that also use V-twin engines and produce similar sounds. Other issues with the Harley-Davidson application included whether the exhaust sound was a functional byproduct of a motorcycle engine and whether the exhaust sound was descriptive of the motorcycle engine. Unfortunately, these issues were not examined by a U.S. court as Harley-Davidson abandoned its application.

Whereas the United States has allowed sound trademark registrations since the 1950s, Canada has only adapted its trademark practices this year to recognize sound trademarks. In March 2012, the Canadian Trade-marks Office announced that it would accept applications for sound marks.16 This is a significant change to the Office’s long-standing position that sound trademarks are not registrable.

The change in policy came after the Office agreed to consent to an order by the Federal Court of Canada that required the Office to approve MGM’s sound mark for a lion’s roar. MGM had been in discussions with the Office since 1992 with regard to the registrability of MGM’s sound mark. In 2010, MGM appealed the Office’s refusal of its application to the Federal Court of Canada. The order to approve MGM’s mark brought an end to a 20-year examination process. After the Office was directed to approve the MGM sound mark by court order, it issued a practice notice on March 28, 2012, stating that in view of the order, the Office will now accept applications for sound marks.

Although the Office has repeatedly refused applications to register sound trademarks, it did approve the first sound trademark application, filed in 1985 by Capitol Records, for a series of musical notes used in association with phonographs and records. The mark was registered in 1989, and later expunged in 2005 when Capitol Records failed to renew its registration. The Capitol Records application was the only sound mark application approved by the Office until the approval of the MGM application in March 2012. The Office’s reasons for refusing sound mark applications were the Playboy decision17 and the requirement by the Canadian Trade-marks Act that a nonword trademark application contain a drawing that accurately represents the applied-for trademark.18 The Office was not swayed by the fact that other countries, including the United States, Australia, and most European countries, had adapted their trademark practices to provide trademark protection to sound marks. Most commentators had criticized Canada’s reluctance to adapt its trademark laws. In fact, organizations such as the Intellectual Property Institute of Canada, the Canadian Bar Membership, and the International Trademark Association had all lobbied the Office to change its policy to allow for the registration of sound trademarks.

In spite of the Office’s previous position on sound marks, a number of applicants still submitted trademark applications for sound marks. Some of the better-known applications included MGM’s application for a lion’s roar, Intel’s application for the five-note sequence used with its Pentium processor, and CTV Television Network’s application for the opening of its hockey theme song. Intel’s application was deemed abandoned by the Office in 2005 when Intel failed to respond to an outstanding Office action. CTV’s application was deemed abandoned in 2011 by the Office when its request for a further extension of time to respond to an Office action was denied. MGM was the only one that pushed forward with its application. MGM originally filed its roaring lion application in 1992. It made several submissions to the Office, including a 54-page response in December 2008, arguing in great detail why sound marks are registrable under Canadian trademark law. MGM argued that Canada’s statutory definition of “trade-mark” should be interpreted in a broad and liberal manner to include sound marks. It argued that, in view of Canadian law with respect to statutory interpretation and because there is nothing in the Trade-marks Act to suggest that Canadian Parliament intended trademarks to be limited to visual marks, the Office should interpret the statutory definition of “trade-mark” in the same way as in the United States.

MGM also argued that the Office should be cognizant of Canada’s international treaty obligations, as the Paris Convention for the Protection of Industrial Property19 and Agreement on Trade-Related Aspects of Intellectual Property Rights20 require that intellectual property rights be interpreted in a broad sense. MGM submitted that there are considerable public policy reasons to allow for the registration of sound marks, one being that most of Canada’s main trading partners recognize them. Furthermore, MGM pointed out that the Playboy decision was obiter dicta and is therefore not precedential, as the issue in Playboy was whether a verbal description could qualify as a trademark.21

Motion Marks and Hologram Marks

Like sound marks, the Canadian Trade-marks Office has historically refused motion and hologram trademark applications. The reasons for refusal were generally two-fold. First, a motion mark or hologram mark is a multiplicity of marks. It is not a single mark. Second, a motion or hologram mark cannot be accurately portrayed in a drawing.

The Office’s position toward motion and hologram marks, however, appears to be changing. In October 2010, the Office published a draft practice notice setting out guidelines for the registration of motion marks and hologram marks.22 They followed in February 2012 with a consultation on proposed amendments to the Canadian Trade-marks Regulations,23 which include provisions for the registration of motion and hologram marks. Based on the draft practice notice and proposed amendments to the Regulations, it seems that the issues of multiplicity of marks and accurate drawings may no longer be barriers to registration of motion and hologram marks. For example, the accurate drawing issue can be overcome if the applicant provides a description of the motion or hologram mark, as well as drawings that show the various points of movement or the holographic effect in its entirety.

The Office’s shift in policy was confirmed this year when it approved VeriSign’s application for a motion trademark consisting of a series of movements to create the company’s VeriSign logo. Prior to this, the Office had refused all applications for motion trademarks. While there has not yet been approval of a recent application for a hologram mark, we expect that the Office will apply its new policy when confronted with any new application.

In the United States, there are a handful of registered motion trademarks. As with any other type of trademark, a motion trademark must be distinctive, it must not be functional or descriptive, and it must have a source identifying function. One of the best-known motion trademark registrations in the United States is Lamborghini’s motion mark for its car door opening upward. Another well-known registration is Peabody’s “Duck March” motion mark for various hotel services. During examination, Peabody had difficulty satisfying the source indentifying requirement. However, it was ultimately successful after submitting a substantial amount of evidence to show that the “Duck March” was used extensively in commerce and identified Peabody’s hotel services.

While holograms can be registered as trademarks in the United States, they are not without challenges. In In re Upper Deck Co.,24 the U.S. Trademark Trial and Appeal Board (TTAB) denied Upper Deck’s registration for a hologram mark on its baseball cards. In reaching its decision, the TTAB referred to the common use of holograms for nontrademark purposes and found that consumers would not recognize the hologram as a mark.25 Another issue for obtaining a hologram mark registration in the United States is multiplicity of marks. The TMEP states that if a hologram has two or more views, the examining attorney should refuse registration.26

Taste Marks, Scent Marks, and Touch Marks

To date, there has not been a clear policy in Canada with respect to the registrability of taste, scent, and touch marks, as there have not been any Canadian applications for these types of marks. Though no attempt has been made to register these marks, we expect that any applicant who wants to register them will face significant challenges. The application must include a visual drawing of the mark. The mark must also not be descriptive or functional. If the mark is for goods, it will need to be “marked” on the wares somehow at the point of sale. This may be particularly difficult for taste marks.

There are trademark registrations in the United States for scent and touch trademarks. While these marks are registrable in the United States, they are not always easy to register. Applicants must establish that their marks are neither functional nor descriptive. Marks that have been successfully registered in the United States are usually very unique, such as the scent of apple cider for office supplies, the scent of Plumeria blossoms for sewing thread and embroidery yarn, and a velvet texture for a wine bottle. More practical scents and textures may prove more difficult to register.

To date, no taste marks have been registered in the United States. N.V. Organon attempted to register a taste trademark for orange flavor for pharmaceutical products.27 However, the application was refused on the basis that the mark was functional. The TTAB held that flavors are added to pharmaceutical products to mask the taste of the products.28 Therefore, the mark performs a utilitarian function, and it would be unfair to provide one company with an exclusive right to a flavor. The TTAB stated that taste trademarks for pharmaceutical products should always be refused on the basis of functionality.29 The TTAB also found that the mark did not identify the source and commented that it was uncertain how taste could ever function as a trademark, as the consumer has no access to the product’s flavor before purchase.30

Conclusion

This year has seen significant developments relating to nontraditional trademarks in Canada. The Canadian Trade-marks Office approved MGM’s sound mark, ending a 20-year examination process. The Office also approved VeriSign’s application for a motion trademark. By recognizing that certain nontraditional trademarks are registrable, Canada has finally aligned its practice with the United States. While potential applicants will likely continue to face challenges in registering these types of marks in Canada, the changes to Canada’s trademark laws and practices are welcome, and will provide companies with an opportunity to register trademark features that were once unregistrable. As Canada adapts its trademark laws and practices to fully embrace nontraditional marks, it will likely look south to its U.S. trading partner for guidance and direction.

Endnotes

1. Lanham Act, 15 U.S.C. § 1127.

2. Trade Marks Act, 1994, c. 26, § 1 (U.K.).

3. Council Directive 2008/95/EC, of the European Parliament and of the Council of 22 October 2008 to Approximate the Laws of the Member States Relating to Trade Marks, art. 2, 2008 O.J. (L 299) 25.

4. Trade Marks Act 1995 (Cth) s 6 (Austl.).

5. Code de la Propriété Intellectuelle [C.P.I.] art. L711-1 (Fr.).

6. Gesetz über den Schutz von Marken und sonstigen Kennzeichen [MarkenG] [Trade Mark Law], Oct. 25, 1994, BGBl. I at 3082, § 3 (Ger.).

7. 15 U.S.C. § 1127.

8. 514 U.S. 159 (1995).

9. Id. at 162.

10. Id. at 172–73.

11. Trade-marks Act, R.S.C. 1985, c. T-13, s. 2 (Can.).

12. (1987), 16 C.P.R. (3d) 517 (F.C.T.D.) (Can.).

13. Id. at 523.

14. Trade-marks Act, R.S.C. 1985, c. T-13, s. 30(h) (Can.).

15. USPTO, Trademark Manual of Examining Procedure [TMEP], § 202.01 (8th ed. Oct. 2011).

16. Practice Notice: Trade-mark Consisting of a Sound, Canadian Intell. Prop. Off. (Mar. 28, 2012), http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03439.html.

17. Playboy Enters. Inc. v. Germaine (No. 1) (1987), 16 C.P.R. (3d) 517 (F.C.T.D.) (Can.).

18. Trade-marks Act, R.S.C. 1985, c. T-13, s. 30(h) (Can.).

19. Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, 21 U.S.T. 1583, 828 U.N.T.S. 303 (last revised at Brussels Dec. 14, 1990).

20. Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 33 I.L.M. 1197.

21. Playboy Enters. Inc. v. Germaine (No. 1) (1987), 16 C.P.R. (3d) 517 (F.C.T.D.) (Can.).

22. Draft Practice Notice: Non-Traditional Marks, Canadian Intell. Prop. Off., http://www.ic.gc.ca/eic/site/cipointernet- internetopic.nsf/eng/wr02824.html (last modified Oct. 8, 2010).

23. Proposed Amendments to the Trade-marks Regulations—Update on Progress, Canadian Intell. Prop. Off., http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03416.html (last modified Feb. 23, 2012).

24. 59 U.S.P.Q.2d 1688 (T.T.A.B. 2001).

25. Id. at 1691–93.

26. TMEP, supra note 15, § 1202.14.

27. In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006).

28. Id. at 1649.

29. Id.

30. Id. at 1650–51.

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