Topic: Trademark Law
Before I delve into the topic of whether a company can hold a monopoly over chocolate, I want to point out that when I am talking about “monopolies” in the context of a trade-mark I am referring to; when one corporation or entity owns the exclusive right to use a word, image, or design.
In patent law, the “Patent Clause” grants inventors exclusive rights “for limited Times” over their creations. Once a patent expires, anyone is free to use the expired patent. However, using trade-mark law to extend a patent term would violate the “limited times” provision of the Patent Clause. Similarly, such practices would violate principles under the Trade-mark Act itself. The difference between patent law and trademark law is more than can be explained here, but I invite you to visit the official Canadian Intellectual Property Office (CIPO) website if you require some background information on this topic (http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/home).
In the most basic sense, the Trade-mark Act and common law limit the granting of a monopoly on certain words or designs in the hopes of promoting fair competition. In fact, many recent cases reiterate this legal principle (either explicitly or implicitly).
So what does this have to do with chocolate? A better question would be how the owners of the AWAKE Chocolate bar were able to get away with using this design:
Figure 1. Awake chocolate as being sold in stores.
When looking at this chocolate bar you may think that the trade-mark is the word-mark “AWAKE Caffeinated Chocolate,” but that is not the case. The mark as registered in Canada (on CIPO) is the following:
Figure 2. CIPO Database: (Source: http://www.cipo.ic.gc.ca/app/opic-cipo/trdmrks/srch/vwTrdmrk.do?lang=eng&status=OK&fileNumber=1576251&extension=0&startingDocumentIndexOnPage=1)
If you have some background in trade-mark law you may know where I am going with this… but if you don’t, the concern that one would have with this is that the word-mark as used in Figure 1 is clearly descriptive. For example, if the chocolate is caffeinated (arguably a functional element of the product) and one were to name the chocolate bar “Caffeinated Chocolate” then that would be considered “clearly descriptive,” (and potentially functional as well) thus preventing the registration and enforcement of the trade-mark.
Now if we take “AWAKE Chocolate” as registered on CIPO (Figure 2) then that would no longer be “clearly descriptive” of the product, as it would require some thought to understand that “AWAKE Chocolate” is caffeinated chocolate. In the registered form I would be hard-pressed to believe that the owners were trying to extend a monopoly over caffeinated chocolate.
Essentially, if Figure 2 was used as word-mark then we would have serious concerns with the owners over-extending their trade-mark, and perhaps preventing others from entering the market of caffeinated chocolate bars. This mark could in all possibility be used to prevent other corporations from being able to label their product as “caffeinated chocolate.” The counter argument here is of course that the trade-mark here is registered as a design-mark and so the concern does not exist…
“Balancing the Scales” – My Thoughts:
I refuse to accept that re-arranged the words into a design-mark somehow prevents there being a concern with over-extension of the trade-mark here. In addition to the concerns with violating principles of trade-mark law by inappropriately extending monopolies, I believe that the difference between the mark as registered and the mark as used in Canada support an abandonment claim under trade-mark law.
Generally, using a trade-mark that is close enough to its registered form is acceptable and does not hinder the enforceability of the mark. However, in this case I would argue it is different enough to warrant a challenge to their trade-mark given the image of the owl, the word MILK, and of course the word ‘caffeinated’.
In upholding the principles of fair competition and the prevention of monopolies in trade-mark law, I would not be surprised to see legal challenges arise in the near future… especially as the product becomes more popular.
Another lesson to be learned here is that trade-mark owners should be more mindful of changing their trade-mark designs (harken back to the slim and corpulent penguin designs of the Promafil case – abandonment concerns, etc.). The safest way to ensure enforceability of a trade-mark when it is changed is to simply re-register a design-mark. Not only would this prevent abandonment concerns (not discussed in detail here), but it would also allow CIPO to deny registration of marks that attempt to extend a monopoly over common or descriptive terms.
Source: The inspiration for this article was my most recent visit to the grocery store. Although I realize my concerns may be exaggerated to some of you, I believe that one should not wait until a company’s mark is challenged to realize trade-mark issues. Thank you for your readership.
Note: This is not meant to be an exhaustive explanation, and readers are assumed to have a basic knowledge of the law being discussed. Visit my website for some background information regarding passing off should you be curious to learning more.
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