The previous post looked at Canada’s Until relatively recently, Canadian trademark practitioners had to contend with only 2 mark types: word marks and design marks1. Word marks were formerly restricted to upper case letters, digits and a few of the most basic punctuation symbols. Anything else, e.g. mixed or lower case text, non-basic punctuation symbols, a specific font or character size, any figurative element, etc. was a design mark requiring a specially formatted formal drawing supported by usage specimens.
The word mark type has evolved to encompass so-called standard character trademarks which may contain a combination of prescribed letters, numbers and symbols without any claim to a particular font, size or colour, as set forth in CIPO’s 17 June 2019 Practice Notice. It is no longer correct to say that anything else is a design mark, since we now have non-traditional mark types: sound, hologram, motion, scent, taste, colour, 3D shapes, etc.
So what are design marks? They are marks that consist of or contain figurative elements:
- a mark consisting of one or more figurative elements is a design mark—see the top example in the illustration below;
- a mark combining standard characters with one or more figurative elements is a design mark—see the middle example in the illustration below;
- a mark consisting of standard characters presented in a particular font, size or colour is a design mark—the font, size or colour being the figurative element(s)2 —see the bottom example in the illustration below.
CIPO’s online trademark database and records retrieved therefrom refer to the “design” mark type, but CIPO’s trademark .xml data makes no reference to a “design” mark type. That is because the .xml data is based on WIPO’s ST.96 standard which references the “figurative” mark type. As shown in Appendix C of version 2.2 of its Trademarks Data Dictionary, CIPO replaces WIPO’s “figurative” term with the term “design”. CIPO substitutes its own preferred terminology for some of the other mark types as well, e.g. instead of WIPO’s “olfactory” term CIPO uses “scent”.
Although it is possible to mine CIPO’s trademark .xml data for details of top design marks—as I have done below—the results are arguably less interesting than the word mark results, due to the preponderance of:
- design marks with rather unhelpful textual descriptions, e.g. DESIGN, MISCELLANEOUS DESIGN, LOGO, DESIGN MARK, etc.;
- single character design marks, e.g. M DESIGN, S DESIGN, etc.;
- design marks consisting of foreign (e.g. Chinese) characters;
- trivial geometric shapes, e.g. CIRCLE DESIGN, TRIANGLE DESIGN, etc.
Consider for example these lists3 of the Top 20 design marks that have appeared in Canadian trademark applications:
Design descriptions are normally provided by the mark owner’s agent upon filing of the application, either via CIPO’s eFiling template or (in the pre-eFiling era) via a paper submission accompanying the application. CIPO often accepts such descriptions as is, but may provide its own description if none is forthcoming from the applicant or if the submitted description is unacceptable for some reason.
Conventionally, the ampersand (&) character in a design description signifies the presence of design features of some sort in addition to the feature(s) preceding the ampersand. Consider for example the all time 5th and 6th ranked descriptions M & DESIGN vs. M DESIGN. Conventionally, M DESIGN signifies a figurative presentation of the letter M alone, whereas M & DESIGN signifies a figurative presentation of the letter M with additional figurative element(s) besides the letter M, as in the 2 examples juxtaposed below (click to enlarge the image). However many counterexamples exist, so these purported conventions should not be relied upon.
The results can be filtered to yield potentially more interesting lists of “top” design marks. A brute force approach is to exclude marks having uninteresting descriptions such as 'DESIGN', 'MISCELLANEOUS DESIGN', 'LOGO', 'M & DESIGN', 'M DESIGN', etc. Alternatively (or additionally) Vienna classification codes may facilitate such filtration.
For example, Vienna Category 28 pertains to “Inscriptions In Various Characters” and Category 28’s Division 3 pertains to “Inscriptions In Chinese, Japanese Or Korean Characters”. By excluding marks classified in Vienna Category 28 / Division 3 we can eliminate marks such as CHINESE CHARACTERS DESIGN, CHINESE CHARACTERS & DESIGN and CHINESE CHARACTERS from the query results.
Similarly, Vienna Category 27 (Forms Of Writing, Numerals) / Division 5 (Letters Presenting A Special Form Of Writing) / Section 21 (One letter) can be used to exclude potentially uninteresting marks such as M Design, S Design, A Design, etc. Other possibly useful exclusions include Category 26 (Geometrical Figures And Solids) / Division 1 (Circles, Ellipses) / Section 1 (Circles); and Category 26 (Geometrical Figures And Solids) / Division 4 (Quadrilaterals) / Section 5 (One quadrilateral) to exclude arguably uninteresting trivial geometric designs, e.g. CIRCLE DESIGN.
Of course, any assessment of “interesting” is a highly subjective exercise dependent upon each individual’s perception or objectives. With that caveat, here are 2 potentially more interesting lists of “top” design marks that have appeared in Canadian trademark applications, excluding some “uninteresting” marks as mentioned above:
One may debate whether either of the above tabulations is any more “interesting” than the other, but for certain purposes one of these tabulations may be more useful than the other, or vice versa.
1 Mark type should not be confused with mark category or mark class. CIPO’s mark categories / classes include trademarks, certification marks, distinguishing guises, geographical indications, Plant Breeders Rights denominations, prohibited/official marks, etc.↩
2 See Vienna classification categories 27 and 28 for figurative element classification codes pertaining to font, size or colour. See Some Vienna Statistics for a brief explanation of Vienna codes. ↩
3 These lists are based on queries of a data warehouse particularizing the 1,808,862 marks on the Canadian trademarks register as of 23-August-2021. 875,755 (48.4%) of those marks are currently active; the remaining 933,107 marks (51.6%) are inactive (i.e. abandoned, cancelled, expunged, withdrawn, etc.) as of 23-August-2021.↩
