Non-Traditional Trademarks: The Fashion Industry's Classic & Modern Options

A registered trademark is a valuable asset. It grants the exclusive right to use the trademark across Canada. Without registration, protection is limited to the territory or province of actual use. Registered rights also signal to third parties that the trademark is protected, discouraging infringement.

Following the modernization of Canada's trademark legislation, the trademarks registrar accepts new and non-traditional trademarks. These novel trademarks present notable opportunities for fashion brands.

Choosing the Right Fit

A trademarked word – or wordmark – is the classic form of protection, for the company name, product names, or slogans associated with fashion goods and services, as well as the related goodwill and reputation. Logos are equally classic.

However, discerning brand owners and their clientele may be interested in newer or more interesting ways to trademark their clothing designs, stores, and advertisements.

The Canadian Intellectual Property Office accepts applications for both classic and newer forms of non-traditional trademarks that are of interest to fashion brands.

1. Three-dimensional shapes It is possible to register the three-dimensional shape of a specific product as a trademark. Cuts, designs, and the specific appearance of clothing, shoes, bags, jewelry, or any other fashion items or accessories could be registered as trademarks in Canada. Canada's trademark register has seen trademark applications for the shape of handbags, the 3D configuration of sleeves, sandal footwear, cycling t-shirts, high-heeled shoes, padlock designs affixed to bags and collars for gowns. There are likewise registrations for eyewear statement designs, bracelets and special knots affixed to clasps (such as perfumes or purses).
2. Modes of packaging Packaging can add a unique flair and a memorable, striking, and ultimately distinctive experience for customers opening the box, bag, wrapping, or other containers for fashion items. Modes of packaging can be trademarked. For example, in Canada, the three-dimensional box and color design as a packaging for jewelry has been registered as a trademark. Another applicant seeks to register a box for belts, depicting a belt on the cover to symmetrically match the belt within the container once opened.
3. Colours and patterns It is possible to trademark a colour per se, as well as claim colour patterns or colour as the features of or in combination with other trademark types. Trademarks have been applied for and registered for the colour red applied to sole of a shoe, or for check-marked colour patterns applied to certain fabrics in association with handbags. The colour gray, specifically positioned on certain types of gloves, was also registered.
4. Textures It is also possible to trademark texture, used in association with certain fabrics, metals (such as in jewelry), or leathers. There is a pending trademark application for a matelassé-type texture in combination with the three-dimensional shape of a handbag, as well as a pending application for an angular, etched, mosaic texture derived from interconnected raised partial hexagonal shapes and applied to the sole of footwear.
5. Specially positioned signs The specific position of a sign or symbol on the fashion product, such as a word, colour, or design, can also be trademarked. Trademarks have been applied for and registered in Canada for the positioning of parallel stripes on the sleeves of shirts and on pants, and patches on a shirt. There have been registrations of checkered design positioning on shoes and sandals.

Measuring Twice

The value of a non-traditional mark is both a business and legal question, involving strategic consideration on both levels.

For example, it may not be worth registering a 3D trademark for a one-time or limited season clothing design. On the other hand, the value may be quite high for a flagship design intended for the long term. In a number of cases applying for non-traditional trademarks will require proving acquired distinctiveness in the Canadian marketplace.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.