ARCHIVED — Draft Practice Notice : Non-traditional Marks

Publication Date: XXXX-XX-XX

The requirements for registrability of a non-traditional mark are dependent upon whether the mark falls within the definition of a trade-mark in section 2 of the Trade-marks Act and accordingly upon whether the mark is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.

The Office considers that motion marks and holograms fall within the definition of a trade-mark under s. 2 of the Trade-marks Act.

Where a trade-mark application is filed for registration of a motion mark or a hologram, the application must include (i) an accurate drawing or drawings of the mark; (ii) a description that clearly defines the scope of the mark; and (iii) a statement that the mark is either a motion mark or a hologram. Where it is not clear whether an application is intended to cover a motion mark or a hologram, the Office will ask the applicant for a written clarification.

The drawing or drawings submitted must be a meaningful representation of the mark in the context of the written description appearing in the application. This is required for compliance with s. 30(h) of the Trade-marks Act and, bearing in mind that a trade-mark registration is a monopoly, to ensure that the scope of the registration is clear and precise both for competitors and the public in general. (see Novopharm Ltd. v. Astra AB (2000), 6 C.P.R. (4th) 16).

Motion Marks

Where an application is for a motion mark, the Office considers that the above requirements would be satisfied if the application complies with the following:

1. The drawing(s) included in the application must clearly delineate the scope of the mark. This will require the drawing(s) to contain one or more freeze frames showing the various points in movement, depending upon how many freeze frames would best depict the commercial impression of the mark. If the application contains two or more freeze frames, the freeze frames should be numbered chronologically. The Office will object if the drawing(s) (is/are) not clear and precise enough for competitors and the general public to ascertain the scope of the mark. The Office will also object if the number of freeze frames needed to delineate the mark is excessive.
2. In addition to the drawing(s) provided, the application must also contain a detailed written description stating specifically which elements of the mark are in motion and describing the motion itself. The written description in conjunction with the drawing(s) must completely and precisely delineate the scope of the mark.
3. Furthermore, in order for the application to comply with Rule 24 of the Trade-mark Regulations, the application must contain the following statement in addition to the description and drawing provided: "the subject application covers only one trade-mark."
4. The application must also contain a representation, no more than 1 MG in size, of the applied-for motion mark on a DVD, a CD or a portable USB flash drive. The media on which the representation is submitted must be properly identified and must reference the applicant's name. The representation must be accessible by the authorities and by third parties and must allow members of the general public to ascertain the precise nature and scope of the trade-mark.

If the motion mark contains colour, in accordance with the provisions of Rule 28 of the Trade-mark Regulations, the applicant will be required to claim colour as a feature of the mark and provide a description of the colour (or colours) claimed as part of the application.

Holograms

Where an application is for a hologram, the Office considers that the above requirements would be satisfied if the application complies with the following:

1. The drawing(s) included in the application must clearly delineate the scope of the mark. This will require the drawing(s) to contain between one or more freeze frames depicting views of the hologram from different angles, depending upon how many freeze frames would best depict the commercial impression of the mark. All aspects of the holographic effect would need to be visible in the drawing(s). The Office will object if the drawing(s) (is/are) not clear and precise enough for competitors and the general public to ascertain the scope of the mark. The Office will also object if the number of freeze frames needed to delineate the mark is excessive
2. In addition to the drawing(s) provided, the application must also contain a detailed written description describing any colour, movement and/or changes in each of the freeze frames. The written description in conjunction with the drawing(s) must completely and precisely delineate the scope of the mark.
3. Furthermore, in order for the application to comply with Rule 24 of the Trade-mark Regulations, the application must contain the following statement in addition to the description and drawing(s) provided: "the subject application covers only one trade-mark."

If the hologram contains colour, in accordance with the provisions of Rule 28 of the Trade-mark Regulations, the applicant will be required to claim colour as a feature of the mark and provide a description of the colour (or colours) claimed as part of the application.

Note: This practice notice is intended to provide guidance on current Trade-marks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.