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 two main types of trademarks. They are:
- Ordinary marks
- Certification marks
The first type of trademark, called ordinary marks, is a word, a symbol (design), a sound, a picture, moving images, a three-dimensional shape, a mode of packaging, 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. The new Trademarks Act, in force as of June 14, 2019 now makes it possible for non-conventional, distinctive marks such as tastes, smells, textures, distinctive colours and holograms to be protected as well. These are now included in the Canadian Intellectual Property Office (CIPO) list of ordinary marks.
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. One person or business usually owns this type of trademark, 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 “CSA” mark owned by the CSA Group (formerly the Canadian Standards Association). The “CSA” certification mark is used by other companies to indicate that a product has been independently tested and certified to meet recognized standards for safety or performance.
Distinguishing guises no longer a classification
Distinguishing guises were trademarks that comprised the shaping of goods or their containers, or the mode of wrapping or packaging goods, the appearance of which distinguished the source or origin of those goods. The new Trademarks Act no longer includes a definition of “distinguishing guise”. A trademark of this nature must be registered as either (a) a three-dimensional shape, or (b) a mode of packaging goods – two marks which are included in the Canadian Intellectual Property Office (CIPO) list of ordinary marks.
Trademark vs. Trade Name
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 organization. It is only possible to register a trade name as a trademark if the name is used to identify a product or service.
No prior use requirement
Under the new Trademarks Act, there is no prior use requirement. A trademark for a good or service can be registered without it having already being used. 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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