Registration of a trademark in Canada provides several benefits to the trademark owner. One of the important benefits is that the "burden of proof" is shifted to the other party in the event of a dispute, which basically means that the registered owner has the upper hand when it comes to proving some of the elements of the case. In addition, a registered owner has the right to the exclusive use of the mark across Canada, regardless of the geographic area within the country where the mark has been used. However, under the provisions of the Canadian Trademarks Act, certain trademarks cannot be registered. The most common types of marks that fall into this category are the following:
1. Marks that are "clearly descriptive" of a characteristic or quality of the associated goods and/or services. The reason for a prohibition against registering a descriptive mark is that no one should have the exclusive right to use ordinary words that might be used to describe a product or service and prevent others from using that word or words. For example, if a fast food outlet were able to register DELICIOUS HAMBURGER for their hamburgers, they could then go about stopping everyone else who used those words to describe their hamburgers. Taken to the extreme, there might be no common words left for general descriptive use!
2. Marks that are "primarily merely" a name or surname of an individual who is living or who has died within the preceding 30 years. There are some qualifications on when the Canadian Trademarks Office will object to the registration of a mark when a name is involved. First, as indicated, the mark will be denied registration only if it is "primarily merely" a name or surname. Thus, if the word has another more common meaning, there may be no objection. As a threshold test of this, the examiner in charge of the case will do an online telephone directory search and should only make the objection if at least 25 listings for the name are found. Second, the prohibition does not apply to names of people who died more than thirty years ago.
Trademarks that offend these provisions are considered to lack the necessary "distinctiveness" in order to qualify for registration. "Distinctiveness" is the characteristic or quality that distinguishes an owner's brand from the names, marks or brands of competitors.
The types of marks discussed above are quite common. In fact, it is not at all unusual for a company or marketing department of a company to attempt to come up with a trademark that is as descriptive of the product or service as possible. Choosing a trademark that suggests the nature or a characteristic of the product or service to consumers is often considered to be the optimal strategy for the success of the brand. Moreover, trademarks that are names, whether they are rock stars, fashion designers or less well-known names and surnames are extremely popular.
Faced with the competing interests of choosing a trademark that meets the marketing goals of maximizing the popularity and success of the brand and at the same time ensuring that the mark can be protected by registration in Canada can be challenging. However, there are a few things that can be done to rescue an otherwise unregistrable mark. The following are some tips:
1. Add design features to the mark. An original design or "logo" can have the effect of transforming descriptive words or names into marks that can be registered.
2. Add an additional word or words. Coupling descriptive words or names with distinctive text can render the overall trademark registrable. An example of this is MCTAVISH PEARL DROP for use in association with mints.
3. Provide evidence of "acquired distinctiveness." A descriptive trademark or a name or surname may be registrable if the owner has used the mark in Canada for a sufficient time and to a sufficient extent that the mark has acquired distinctiveness or, in other words, has become known as the owner's mark. Generally speaking, several years of Canadian sales of the product or service are required, although this is not necessarily the case if promotion and sales have been extensive. The test is whether Canadian consumers have come to recognize the brand as a reliable indicator of the products or services of the owner. Details of the extent of sales and promotion are normally required, but the amount of evidence that is required may be less in cases where the owner is located outside of Canada and has already registered the mark in its home country.
Given the benefits of registering a trademark in Canada, it is worthwhile to attempt rehabilitation of an otherwise unregistrable mark through one or more of the means discussed above.
For further information on the upcoming amendments to the Trademarks Act, or to apply to register a trademark in Canada, please contact a member of our Trademarks group.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.