Below is an excerpt from John McKeown’s July Mailer where he discusses product packaging and trademark reform.
Product Packaging
Product packaging is one of the tangible elements of a brand. The packaging of a product, in addition to its functional purpose, must visually express the brand image and the values the image symbolizes. The package design must work harmoniously with other aspects of the brand communication and all of the elements of the packaging, such as colours, graphics, typography and structure must also be consistent with the brand image and its values.
Packaging plays a key role in influencing the choices that consumers make. In many cases packaging is the spokesperson for the brand which helps communicate the brand’s uniqueness and importance.
Product packaging may be protected under the Copyright Act as a literary or artistic work or as a compilation. Registration under the Trade-marks Act is also possible but there may be practical problems. Additional comments concerning protection will follow next month.
Trademark Reform
Bill C-31 received Royal Assent on June 19, 2014. As previously noted the Trade-marks Act is amended to in broad terms to, among other things,
- change the name of the Act to the Trademarks Act;
- make that Act consistent with the Singapore Treaty on the Law of Trademarks;
- add the authority to make regulations for carrying into effect the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
- simplify the requirements for obtaining a filing date in relation to an application for the registration of a trademark;
- eliminate the requirement to file a declaration of use of a trademark before registration;
- reduce of the term of registration of a trademark from 15 to 10 years; and
- adopt the classification system established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
While the majority of these changes are positive in nature the amendments allow an applicant for a trademark to obtain a registration without any requirement to specify a date of first use of the trademark in Canada or to show use before obtaining a registration. There are significant concerns with respect to the potential negative impact that this change will have on the Canadian trademark system and the failure of the Government to engage in any consultations with interested parties. We may not have heard the last word on the these amendments since affected parties will likely seek to have the Act amended.
Click here to read the entire mailer.