The Scent of a Crayon: Unique Complications with Scent and Other Non-Traditional Trademarks in Canada
Do you know what a crayon smells like? Many of us would find the scent to be familiar and perhaps even nostalgic if we cracked open a box today. Scents have a well-known capacity to evoke emotional responses and memories – they can transport us back to a specific place and time. A distinctive scent may even enable consumers to identify a particular brand. Such scents can now be the subject of trademark registrations in Canada.
Here is a harder question – can you describe the scent of a crayon? In a pending Canadian trademark application, Crayola Properties, Inc. has described the scent of its crayons as follows:
A unique scent of a pungent, aldehydic fragrance combined with the faint scent of a hydrocarbon wax and an earthy clay.
For the average Canadian consumer, regardless of how familiar they may be with the scent of a Crayola crayon, that written description may not have much meaning to them. This example underscores some of the limitations inherent in describing a scent trademark so as to facilitate the clearance, registration and enforcement of such marks.
It was only in June 2019 that the Canadian Intellectual Property Office (“CIPO”) began accepting applications for scent trademarks and certain other types of non-traditional marks such as holograms, moving images (motions), tastes and textures. For each of these categories, defining the scope of a trademark with the requisite degree of certainty, may prove to be difficult.
This leads to uncertainty on key issues such as: (i) what degree of specificity will be required to secure a registration; and (ii) the parameters for assessing the likelihood of confusion (both in the context of CIPO examination and infringement). For example, one of the key factors in the likelihood of confusion analysis is the similarity between the respective marks. When dealing with traditional word marks and logos, the task of comparing the visual similarly of the respective marks is well-established and relatively straightforward. However, how would one go about comparing a new scent description to the above description?
To date, CIPO has offered little guidance on these issues. With respect to applications for scent marks, CIPO has advised as follows:
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.
Unlike the description in the above-noted application, these examples are scents that the average consumer would easily understand. However, the fact that these scents are ubiquitous (and described in broad terms), may also be problematic. For example, should one trader have the right to monopolize the scent of strawberry for use in connection with goods such as perfumes or body sprays or deodorizers? Similarly, if one retailer secures a registration for the coconut scent referenced above, should it have the right to stop any new retailer, anywhere in Canada, from using a coconut scent in its stores?
The core issue underlying these questions is whether such scent marks are (or could be) truly distinctive of one trader. Put another way, could the scent of coconut in the air, in and of itself, cause a consumer to be confused as to the source of the goods and services offered in that store? If there is no likelihood of confusion, then such a scent mark would not be enforceable.
To date only a handful of Canadian applications have been filed for scent marks, taste marks, and the other new categories. Moreover, it is clear that a number of these applications have not been properly categorized or described and will not be allowed as currently filed. As the applications proceed through CIPO examination, however, it will be interesting to see whether any further clarity or guidance on these issues emerges.
That being said, the timing of any such guidance may be further delayed as CIPO’s processes have slowed in light of the ongoing response to the COVID-19 pandemic. In the meantime, as families continue to quarantine and home-school in the coming weeks, I expect that many will encounter that familiar scent of a crayon.
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.