Tasty Trademarks: An Analysis of the Canadian Trademark Applications Covering Taste
December 15, 2020
Do you remember the PEPSI taste challenge? I have distinct childhood memories of lining up at the booth and trying to discern, by blind taste test, which cola product was PEPSI and which product was COKE. This campaign was premised on the notion that PEPSI cola has a distinct taste by which consumers could identify its product. Brand owners with distinctive-tasting products can now seek registrations for taste trademarks in Canada.
The introduction of taste trademarks in June of 2019, along with other non-traditional categories such as scents, holograms, moving images and textures, was met with some excitement in the intellectual property community. However, a review of the filings to date reveals that relatively few brand owners are seeking registrations for taste marks. At the time of writing there are 47 active applications which have designated taste as the trademark type. None of these applications has yet reached examination. However, our analysis reveals that the vast majority of these applications have either been improperly designated as taste marks or fail to include the requisite information. Some key statistics are discussed below.
- 55% of the applications include multiple trademark category designations
As part of the trademark application, the applicant must designate the type of trademark. Our research found that 55% of the taste mark applications have designated multiple trademark types (e.g. taste, design, a mode of packaging goods etc.). There are some limited contexts in which a trademark may consist of a combination of two or more trademark types. The Canadian Intellectual Property Office (“CIPO”) has given the example of a mark that consists of both a sound and a moving image. Another conceivable example is a mark that consists of both a taste and a scent, although it is not certain if CIPO would allow this combination.
That being said, for the 55% of taste mark applications referenced above, the indexing of multiple trademark types appears to have been in error. If fact, each of these applications also included a depiction of a design mark, logo or a photograph. No single trademark can logically consist of both a taste and a design. If a brand owner wants to register both a taste mark and a design mark then each such mark must be subject to a separate application. This data suggests that there was some confusion on the part of the applicants regarding the type of trademark being sought and/or how to complete the application. Many of these applications cover food-related goods and services which may have led the applicants to erroneously assume their mark is a “taste” mark. In any event, this 55% of the taste mark applications will be subject to office actions on this point, at a minimum.
- 70% of the applications have no reference to taste in the trademark description
Paragraph 30(2)(c) of the Trademarks Act (the “Act”) provides that an application for a trademark must include a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements. In the context of a trademark containing or consisting of a taste, the application must therefore include a clear and concise description of the taste. CIPO provides the following example: the trademark consists of the taste of black licorice.
For the taste mark applications filed to date, we conducted a substantive analysis of the trademark descriptions to assess compliance with paragraph 30(2)(c). We found that for 70% of the applications, the trademark description included no reference whatsoever to taste. For 17% of the applications, there was some reference to flavour or ingredients in the trademark description but the description was likely not compliant without further amendment or specification. Based on our analysis, only 13% of the applications included a clear description of the taste that may be compliant with paragraph 30(2)(c) of the Act. However, given that CIPO has not yet examined a single taste mark application, it remains to be seen what level of specificity examiners will find to be sufficient for the description.
- Only a single application was filed by a trademark agent
Interestingly, only a single application out of the total 47 was filed by a trademark agent. The 46 remaining applications were filed directly by brand owners, which may explain some of the problems and non-conformities referenced above.
Additional Issues - Distinctiveness and Functionality
Two other key issues that brand owners seeking taste mark registrations should be aware of are distinctiveness and functionality.
Most categories of non-traditional marks, including taste marks, are considered not “inherently distinctive”. As such, an applicant for a taste mark will be required to file evidence to establish that its proposed mark was distinctive, as of the filing date, in order to secure a registration.
Paragraph 12(2) of the Act denies registration of a trademark if, in relation to the goods or services listed in the application, its features are dictated primarily by a utilitarian function. CIPO has taken the position that taste marks will generally be considered functional in association with goods or services whose primary purpose is to provide or impart a flavour. By way of example, CIPO considers a taste mark in association with food flavourings to be unregistrable.
As noted above, only 30% of the taste mark applications filed to date include some reference to taste or ingredients in the trademark description. Of those 30%, the majority cover food or beverage-related goods and services and some arguably cover goods whose primary purpose is to provide or impart a favour. As such, we anticipate that some of these applications will also be subject to functionality objections from CIPO.
The availability of protection for non-traditional marks represents an enormous opportunity for brand owners to protect distinctive attributes of their products. Unsurprisingly, the uptake for taste marks to date has been primarily in the food and beverage space. However, other sectors such as cannabis, vape and tobacco, among others, could likewise capitalize on the protections. The foregoing analysis demonstrates that unique complications can arise in pursuing non-traditional marks – particularly in these early days when no such applications have yet been examined. This underscores the importance of retaining a qualified trademark agent or lawyer to navigate the process and ensure that the statutory requirements are met.
For further analysis on scent trademarks, see our article The Scent of a Crayon at https://cpstip.com/the-scent-of-a-crayon.html. CPST Intellectual Property is available to assist with your non-traditional trademarks. Please contact any of our trademark professionals to inquire as to our services.
Handbags and Ochre and Hearts, Oh My!: A Survey of Canadian Trademark Applications for Textures, Holograms, Motions and Colours
In June 2019, the Canadian Intellectual Property Office (“CIPO”) began accepting applications for certain new types of non-traditional marks. We surveyed the applications filed to date for marks indexed as textures, holograms, motions, or colours per se. Our research revealed that the majority of such applications have been improperly (perhaps inadvertently) filed in these categories and/or failed to include the information and details required by CIPO.
The Federal Court of Canada is a creature of statute and only possesses the jurisdiction that has been conferred by statute. However, many claims include subject matter both inside and outside of that jurisdiction. The question of when the Federal Court can and should accepted matters is not always easy. A couple of recent cases highlight that tension.
In Canada, the use of patent prosecution history in litigation proceedings was strictly impermissible until 2018, when the Patent Act was amended. The Act now allows certain submissions made during prosecution to be introduced as evidence for construing granted claims. This practice is now regularly invoked when patent claims are asserted and the accused infringer seeks to limit their scope.