Non-traditional Trademarks

Publication Date: June 17, 2019

This notice is intended to clarify the practice of the Trademarks Office with respect to applying the provisions of paragraphs 30(2)(c) and (d) of the Trademarks Act (the "Act") for non-traditional trademarks consisting in whole or in part of a sound, hologram, moving image (motion), scent, taste, colour per se, a three-dimensional shape, a mode of packaging goods, a texture, or a positioning of a sign.

Part I: Non-traditional trademark types

Sound

Pursuant to paragraph 31(e) of the Trademarks Regulations (the "Regulations"), if the trademark consists in whole or in part of a sound, a statement to that effect must be included in the application.

For a trademark containing or consisting of a sound to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a clear and concise description as well as an electronic recording of the sound. Electronic recordings must not contain any looping or repetition of the sound, nor include any sounds that do no form part of the trademark. A visual representation of the trademark may be included in the application but is not required.

An example of an acceptable description of a sound trademark would be:

The trademark consists of the sound of a lion's roar, the audio representation of which is included in the application.

Hologram

A hologram is defined as a three-dimensional picture made by laser light reflected onto a photographic substance without the use of a camera. Although holograms can be a singular image, they can also show different images when viewed from different angles.

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a hologram, a statement to that effect must be included in the application.

For a trademark containing or consisting of a hologram to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a visual representation in the form of one or more still images, sufficient in number and clarity, to demonstrate the holographic effect in its entirety.  The application must also include a clear and concise description of the visual effect when the hologram is viewed from different angles.

The application may also include a digital representation of the trademark, in the form of a moving image (animation) clip, that demonstrates the holographic effect in its entirety.

If the visual representation depicts different views of the same trademark, a statement to that effect must be included in the application to comply with section 27 of the Regulations.

If colour is claimed as a feature of the hologram, the application must also contain a statement to that effect and the visual representation(s) must be in colour. If colour is not claimed as a feature, the visual representation(s) must be in black and white.

An example of an acceptable description of a hologram trademark without a claim to colour(s) would be:

The trademark consists of a hologram of a dove in flight.  The visual representation included in the application depicts the full range of the holographic effect.

An example of an acceptable description of a colour hologram trademark would be:

The trademark consists of a hologram of a map of the world as depicted in the visual representation.  The trademark has a holographic rainbow colour effect and the applicant claims the colours red, orange, yellow, green, blue, indigo, violet as a feature of the trademark.

Moving image (motion)

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a moving image, a statement to that effect must be included in the application.

For a trademark containing or consisting of a moving image to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include an electronic representation of the trademark, in the form of a moving image (animation) clip, that demonstrates the full range of the moving image. The animation clip must run only once and not repeat or loop. A visual representation which consists of a static frame-by-frame representation of the motion will only be accepted if it is submitted with the animation clip. The application must also include a clear and concise description of the whole visual effect of the animation from start to end.

If colour is claimed as a feature of the animation, the application must also contain a statement to that effect and the visual representation(s) must be in colour. If colour is not claimed as a feature, the visual representation(s) must be in black and white.

An example of an acceptable description of a moving image trademark would be:

The trademark consists of a moving image of a book being opened and a page turned, as shown in the visual representation included in the application.

Scent

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a scent, a statement to that effect must be included in the application.

For a trademark containing or consisting of a scent to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a clear and concise description of the scent.

Examples of acceptable descriptions for scent trademarks include:

The trademark consists of the scent of strawberry.

The trademark is a coconut scent diffused throughout a retail store setting.

Taste

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a taste, a statement to that effect must be included in the application.

For a trademark containing or consisting of a taste to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a clear and concise description of the taste.

An example of acceptable descriptions of a taste trademark would be:

The trademark consists of the taste of black licorice.

Colour per se

Pursuant to paragraph 31(g) of the Regulations, if the trademark consists of a single colour or combination of colours without delineated contours, a statement to that effect must be included in the application.

For a trademark consisting of colour per se to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a description that provides the common name of the colour(s). A visual representation consisting of a square swatch in each colour is also required.

The application must not include a statement that colour is claimed as a feature of the trademark as colour is the trademark and not merely a feature thereof.

An example of acceptable descriptions of a colour per se trademark would be:

The trademark consists exclusively of the colour red without delineated contours, as shown in the visual representation.

A three-dimensional shape

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a three-dimensional shape, a statement to that effect must be included in the application.

For a trademark containing or consisting of a three-dimensional shape to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a visual representation. The representation should only include those portions of the three-dimensional object that form part of the trademark. However, if the representation includes elements that do not form part of the trademark (e.g. in order to further clarify the trademark), they must be shown in dashed lines and the application must include a statement that the portions of the representation shown in dashed lines do not form part of the trademark.

If the visual representation depicts different views of the same trademark, a statement to that effect must be included in the application to comply with section 27 of the Regulations.

If colour is claimed as a feature of the three-dimensional shape, the application must include a statement to that effect and the visual representation(s) must be in colour. If colour is not claimed as a feature, the visual representation(s) must be in black and white.

Mode of packaging goods

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a mode of packaging goods, a statement to that effect must be included in the application.

For a trademark containing or consisting of a mode of packaging goods to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must, in addition to a clear and concise description, include a visual representation.

If the visual representation depicts different views of the same trademark, a statement to that effect must be included in the application to comply with section 27 of the Regulations.

If colour is claimed as a feature of the mode of packaging goods, the application must include a statement to that effect and the visual representation(s) must be in colour. If colour is not claimed as a feature, the visual representation(s) must be in black and white.

An example of acceptable descriptions of a mode of packaging goods trademark would be:

The trademark is a mode of packaging goods and consists of the way the goods are wrapped in green cellophane, as depicted in the drawing. The colour green is claimed as a feature of the trademark.

Texture

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a texture, a statement to that effect must be included in the application.

For a trademark containing or consisting of a texture to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include  a clear and concise description of the tactile qualities of the trademark.  The application may include a visual representation of the texture if it would add clarity to the description.

If the visual representation depicts different views of the same trademark, a statement to that effect must be included in the application to comply with section 27 of the Regulations.

If colour is claimed as a feature of a texture trademark, the application must include a statement to that effect and the visual representation(s) must be in colour. If colour is not claimed as a feature, the visual representation(s) must be in black and white.

Examples of acceptable descriptions of a texture trademark include:

The trademark consists of the texture of 100 grit sand paper on the surface of the associated goods.

The trademark consists of the texture of fine leather on the surface of the bottle as depicted in the visual representation.

The trademark consists of the waffle type texture as applied to the surface of toilet paper as depicted in the visual representation.

Positioning of a sign

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of the positioning of a sign, a statement to that effect must be included in the application.

For a trademark containing or consisting of the positioning of a sign to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must, in addition to a description, include a visual representation of the trademark.

Where the applicant is seeking registration of the position of a sign on a three-dimensional object, any representation must show the three-dimensional object in dashed lines, and the application must include a statement that the object shown in dashed lines does not form part of the trademark but is included merely to show the positioning of the sign.

Where the applicant is seeking registration of the position of colour(s) as applied to the whole or portions of the surface of a three-dimensional object, the application must include a statement that colour is claimed as a feature of the trademark, and the visual representation(s) must be in colour. This is required because in this situation the colour is considered as a feature of the positioning of the trademark.

If the visual representation depicts different views of the same trademark, a statement to that effect must be included in the application to comply with section 27 of the Regulations.

An example of acceptable descriptions of a position trademark would be:

The trademark consists of the position of a fanciful horse design applied to a three-dimensional bottle, as shown in the visual representation.  The bottle shown in dashed lines does not form part of the trademark but is included merely to show the positioning of the design.

The trademark consists of the position of a v-shaped stitching design as applied to a pocket, as shown in the visual representation. The pocket shown in dashed outline does not form part of the trademark but is included merely to show the position of the trademark.

Part II: Additional considerations

Combinations

Applications for trademarks that consist of a combination of two or more trademark types must meet the minimum requirements for each trademark type.  For example, an application for a trademark that consists of both a sound and a moving image must meet the requirements for a sound trademark as well as the requirements for a moving image trademark.

Trade dress

The application requirements for trademarks that are described in some foreign jurisdictions as "trade dress" will depend upon the nature of the trademark.  For example, an application for a particular colour scheme of a retail interior could be considered as a three-dimensional shape, a position or a colour per se trademark.

Multiple views

Generally, no more than six different views will be required to clearly define a trademark. If more than six views are included in the application, Examiners may request the applicant to remove from the application those views that do not provide additional clarity.

Format of electronic files

Applications filed by paper may attach electronic files of images or sounds provided on a CD, DVD, or USB stick. Alternatively, applicants who file by paper may include still images of the trademark on separate pages; the images must be clearly labeled to indicate the order in which they appear in the visual representation of the trademark.

When providing electronic files containing multiple still visual representations of trademarks, applicants may provide either one image per file or all images in one file. If one image per file is provided, only the first image provided will appear in correspondence from the Office.

The following table provides an outline of the requirements when providing audio and visual representations in electronic format whether an application is filed by paper or online.

Format of electronic files
File content File format extension Max # of representations Max file size
Sound recording .MP3 1 10 MB
Moving image .MP4 1 10 MB
Still  image .PNG / .TIF / .JPG / .GIF No maximum 10 MB

Amendments

Pursuant to paragraph 35(2)(e) of the Regulations, an application can only be amended to add or remove a statement in paragraph 31(b) of the Act or paragraph 31(e), (f) or (g) of the Regulations if the application has not been advertised and the trademark remains substantially the same.

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