Taste, Smell, Sound, Touch, and Sight - Appealing to All Five Senses with Non-Traditional Trademarks

By Deborah Meltzer, February 2, 2021

Words and logo designs tend to steal the show when it comes to what many typically associate with the term “trademark”. What is often underrepresented is that trademarks can be used to interact with consumers beyond their two-dimensional, visual components. In June of 2019, the Canadian Trademarks Act was amended and now includes a slew of non-traditional trademarks, such as three-dimensional shapes, colours in abstract, moving images, modes of packaging goods, smells, tastes, sounds, positions, textures, and holograms.

The expansion of the legal definition of a trademark in Canada, in conjunction with the potential perpetual term of protection, offers brand owners significant incentive to employ a multi-pronged approach in the protection of their products and services. Various unique elements of a product or unique features of consumer experience in the performance of a service may be protected as trademarks. By way of illustration, in practice, this can include the unusual shape of a bottle, the exclusive scent of a store, a catchy jingle, or the texture of a handbag. But like all good things, there is a catch. The Trademarks Act includes certain limitations which restrict the availability of non-traditional trademark protection.

Trademark protection cannot be extended to features which are dictated primarily by utilitarian function, in relation to the associated goods and services (s.12(2) of the Trademarks Act), nor can they unreasonably limit the development of any art or industry (s.18.1 Trademarks Act). For instance, it is unlikely that the taste of mint could be trademarked in association with gum, or a flowery scent trademarked in association with perfume, as these features are dictated by the functional aspect of the respective goods and would unreasonably limit the art and/or industry. On the contrary, the taste of mint in association with lipstick, or a flowery scent in association with stationary would likely not contravene the Trademarks Act. These provisions are also largely intended to remove the possibility of extending perpetual trademark protection to features which would otherwise be protected through a patent. In fact, the Lego® brick was famously the subject of this exact dispute before the Supreme Court of Canada.[1]

Moreover, at the examination stage, unlike in the case of a traditional trademark, the Canadian Trademarks Office will typically require evidence of distinctiveness of the applied-for non-traditional trademark. This means that the applicant would need to prove that the trademark has amassed sufficient reputation in Canada, to the point where the average Canadian consumer has been adequately educated as to its trademark status. This is often referred to as a “secondary meaning” since the evidence would need to demonstrate that the trademark’s overwhelming reputation causes consumers to dispense of its primary meaning. A classic example is the Coke® bottle. A bottle containing cola (primary meaning) is not specific to a single source, however the Coke® bottle is instantly identifiable, even when stripped of its label, because of the tremendous consumer recognition of that particular bottle shape belonging to Coca-Cola (secondary meaning). As such, it is advisable that a brand owner has several years of use of their non-traditional trademark and compile detailed evidence of the trademark’s reputation prior to formally applying for its registration with the Canadian Trademarks Office.

In creating marketing strategies, brand owners should consider the proprietary potential in thinking “outside the [traditional] box”. For example, in contemplating protecting a unique shape as a trademark, brand owners should consider taking advantage of the monopoly afforded by an industrial design in order to secure exclusivity and reputation in the shape, prior to filing for trademark protection. All things considered, creative branding strategists should venture beyond the conventional two-dimensional eye candy appeal of words and logos, and contemplate trademarks which can be perceived in three dimensions, felt, smelt, tasted or heard.

Despite the potential challenges with acquiring registrations for non-traditional trademarks, our team is accustomed to developing tailored non-traditional trademark strategies designed to properly position brand owners for success. If you are thinking of protecting a non-traditional branding element as a trademark, we would love to chat. MBM offers initial consultations at no charge.