Bill C-8: Does it pass the smell test?

On October 28, 2013 the Canadian Parliament tabled legislation in Bill C-8 to update the Trade-marks Act.  I say again, since, prior to the recent prorogation of Parliament, these similar changes were already tabled by the old Bill C-56.  It is unknown when these changes will take effect.

Let’s recap the major points:

1. The definition of “wares” will be replaced with “goods”.
2. The definition of “trade-mark” will now include “signs”, which shall include sounds, scents, tastes, textures, and positioning of signs.
3. Section 19.1 of the proposed Act will include an absolute prohibition against counterfeit goods in Canada, including manufacturing, importing, exporting, attempting to manufacture, and other actions involving these goods.
4. Section 36 of the proposed Act will allow a “divisional” application to separate goods which have already been in use from those for proposed use, which although triggers an additional filing fee, will be treated with the same filing date and priority.
5. Criminal sanctions will be introduced for counterfeiting registered trade-marks, including up to 5 years in prison or a fine of up to $1,000,000.00.

Of particular interest to me is the introduction of scents, tastes, textures, and sounds, which I believe to be a step in the right direction of protecting marketing brands.  There are certain types of goods whose goodwill and reputation rely heavily on these areas (think perfume or the taste of Coca-Cola).  However, I fail to see how these “signs” will be properly protected, yet alone how they will be submitted for registration.  Functionally, getting the “taste” or “smell” to the Trade-Marks Office for an application could be quite the hassle (trap the newly baked cookies in a glass container?).  Administratively, these types of applications could also not be done online.  Secondly, how will the Trade-Marks Office categorize the taste or smell of an item when these are, I would imagine, subjective and depend on the chemical makeup of our taste-buds or olfactory sensors.

It will be interesting to see whether the latest court battle will be Coca-Cola and Pepsi claiming infringement of the other’s taste.  From years of street-side taste challenges, there ought to be plenty of survey evidence to support the lawsuit!

To discuss trade-marks further, contact me today.