Area of Law: Intellectual Property
Answer # 303
What can be Trademarked?Region: Ontario Answer # 303
A trademark can be a word, a symbol (design), a sound, a picture, or a combination of these, that is used to distinguish the product or service of one business from the products and services of other businesses.
There are three main types of trademarks:
- Ordinary marks,
- Certification marks, and
- Distinguishing guises.
The first type of trademark, called ordinary marks, is a word, a symbol (design), a sound, a picture, or a combination of these, that is used to distinguish the product or service of one business from the products and services of other businesses. An example of a word trademark is “Pepsi.” An example of a design trademark would be the McDonald’s golden arches.
The second type of trademark is a certification mark. Certification marks identify products or services that meet a defined standard. This type of trademark is usually owned by one person or business, but the trademark is often licensed to other people to use if their product or service meets the defined standard. An example of a certification mark is the “woolmark,” which is owned by The Woolmark Company. The “woolmark” certification mark is used by other companies to indicate that an item of clothing is made with pure wool.
The third type of trademark is a distinguishing guise. A distinguishing guise identifies the unique shape of a product or a package. For example, the shape of a particular bottle may be a trademark. You can apply for a distinguishing guise trademark to protect the unique shape of your product or package.
It is important to note that there is a difference between a trademark and a trade name. A trade name is simply the name of a business or corporation. It is possible to register a trade name as a trademark if the trade name is used to identify a product or service.
Prior use requirement
Currently, before an application can be registered, the good or service must have been in use in Canada.
New Trademarks Act
On June 19, 2014, the new Trademarks Act received Royal Assent. It is anticipated that the new Act will be proclaimed into force in 2019. The new Act will make it possible for non-conventional marks such as tastes, smells, textures, distinctive colours and holograms to be protected. In addition, the requirement to use the mark before registration will be abolished. The mark can be registered and the applicant will have a three-year immunity from being cancelled for non-use.
For more information about trademarks, refer to the Canadian Intellectual Property Office.
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