October 6, 2016

Non-Traditional Trademarks: Exclusive Rights to Sounds, Scents, and Tastes


Traditional Trademarks: the Status Quo

When we think about trademarks, we picture visual symbols that we can “see”. For example, the McDonald’s golden arches, RE/MAX’s hot air balloon, or the Hilton Hotels letter “H”. In fact, the Canadian Intellectual Property Office (CIPO) has consistently rejected applications to register trademarks that cannot be visually represented. With sweeping reforms on the way to Canada’s Trade-Marks Act that will dramatically expand the scope of protection for trademarks, domestic and international brands should take note and consider applying to obtain trademarks that have traditionally been denied registration in Canada.

Non-traditional Trademarks: Expanding the Senses

Significant amendments were passed to Canadian trademark laws in 2014 which are expected to come into effect in 2018. The amendments include an expanded definition of “trademark” that will enable applicants to register various non-traditional marks such as sounds, scents, tastes, and colours, among others. Currently, Canadian trademark laws provide for the registration of so-called traditional marks such as symbols, designs, and words. While the registrability of sound marks is not explicit under current laws, CIPO has informed the public that it is accepting applications for sound marks. A handful of sound marks have already been registered in Canada, including Metro Goldwyn Mayer’s infamous roaring lion and Toys “R” Us’ “I don’t wanna grow up” jingle. It goes without saying that intellectual property protection has evolved significantly since the concept of a trademark was first conceived.
As with all trademarks, when it comes to the senses, such as tastes, scents and colours, the more distinctive a proposed mark can be, the better chance it will have at becoming registered. For example, it is debatable whether a colour on its own would be capable of registration. The more likely option is that a colour used in association with a specific shape, symbol, or size would receive legal protection. In the U.S., the registration of non-traditional marks has already taken off. Cell phone carrier Verizon Wireless has obtained a trademark for the “flowery musk scent” present in some of its retail stores. So-called scent branding has become popular among retailers and hotel chains. The extent of legal protection that such novel branding strategies will receive in Canada remains to be seen.

Impacts on Franchising

What do these amendments mean for industries like franchising that rely heavily on brand awareness and development? Franchisors in the food and restaurant industry should consider whether any distinctive scents associated with their products are likely to be sufficiently recognizable to consumers to warrant legal protection. Scent is a powerful sense that is tied to memory and often invokes associations in one’s mind – much like visual trademarks have done traditionally. Imagine the familiar aroma of a freshly baked good or the recognizable scent of eucalyptus at an athletic club or yoga studio. Across all industries, franchisors that use jingles in their advertising campaigns should consider seeking trademark protection for those familiar tunes that create associations with their brand in the minds of consumers.

International Perspectives: Why Register in Canada?

In some ways, Canada is late to the game. Non-traditional trademarks have been capable of registration in the U.S., Australia, and the E.U. for quite some time. The upcoming amendments to Canadian law will adhere to various existing international treaties and protocols, thereby bringing Canada’s intellectual property laws up to speed with other significant markets around the world. Given that consumers in Canada are regularly exposed to international brands, particularly from the U.S., foreign brand owners should not overlook the Canadian market when seeking protection for their brands across North America. In addition to Canada being an important consumer market, the amendments to its trademark laws will allow anyone to register a trademark without having even used it anywhere in the world! In a “first to file” jurisdiction such as Canada, this option will give trademark owners a competitive edge by preventing others from entering the Canadian market with a confusingly similar mark. However, it will also motivate squatters to purchase trademarks for re-sale that they have no intention of actually using in the marketplace. By securing your trademark in Canada now, you can avoid paying trademark squatters extortionate sums of money later for your desired trademark.

Conclusion: Branding for the Future

Ultimately, a trademark functions as an indicator of source: it informs the consuming public of the origin of a particular brand. With the expanding definition of “trademark” in Canada, a source indicator can be anything from a visual symbol, sound, or familiar scent. In an age of innovative marketing, Canada is demonstrating its willingness to adapt to contemporary branding strategies by granting intellectual property protection to an evolving category of signs and senses, while at the same time lowering the bar to obtaining a registered trademark that may or may not have been used in Canada. While legal rights to non-traditional marks must ultimately be balanced with healthy competition in the marketplace, a new scope of protection is slowly being carved out in response to an evolving area of creative marketing.