Distinctiveness in Registered Trademarks

The Purpose of Trademark Registration

Registered trademarks differ from common law trademarks, which are established through use and recognition. The purpose of registration is to provide additional rights and remedies that go beyond those available under common law. However, with these extra rights also come additional restrictions. The aim is to strike a balance between allowing the public to use names and descriptions for their goods and services without infringing on proprietary claims. For example, we don’t want one person or corporation to trademark a common word like “apple” in the context of the fruit, as it would limit its use for everyone else. The Registrar of Trademarks therefore has the responsibility of determining what can be trademarked and what should remain in the public domain.

Types of Distinctiveness

Distinctiveness is a key factor in determining whether a trademark is eligible for registration. There are two types of distinctiveness: acquired and inherent.

Acquired distinctiveness refers to trademarks that have become known to consumers as originating from a particular source. It is developed through use and association. On the other hand, inherent distinctiveness is intrinsic to the mark itself, such as an invented word. An inherently distinctive mark can only refer to one thing and is not associated with any other sources related to the goods or services it represents.

For example, the word “Apple” was inherently distinctive before it became associated with computer products and services. Now, it has acquired distinctiveness due to its connection in consumers’ minds with technology products.

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Determining whether a trademark possesses distinctiveness is a matter of fact. Descriptive words are not distinctive, while marks that are more unique and unrelated to the goods or services are more likely to have inherent distinctiveness.

New Legislation on Inherent Distinctiveness

Distinctiveness has always been a requirement for trademark registration. However, the concept of inherent distinctiveness was explicitly included in the Trademarks Act after a major reform on June 17, 2019.

Since the reform, the Registrar can object to a mark if it lacks inherent distinctiveness at the time of application. This new provision allows the Registrar to request evidence of distinctiveness from applicants. The phrase “not inherently distinctive” means that a mark has “no inherent distinctiveness” and is therefore not registrable. It is different from a mark with a “low degree of inherent distinctiveness,” which may still be eligible for registration.

Although this process is new, the test for distinctiveness remains the same. The change merely grants the examiner the authority to take the initiative.

How to Assess Distinctiveness

The distinctiveness of a trademark depends on the context of the goods and services it represents and how the public perceives it. For example, “Apple” is a strong trademark for technology products but would not be suitable for a company selling fruits.

Considering the recent amendments, the Canadian Intellectual Property Office has provided examples of trademarks that are presumed not to be inherently distinctive. These include trademarks featuring geographic locations, generic designs, names of colors, single letters or numbers, descriptive or misdescriptive words in English or French, surnames, laudatory phrases, general information about goods or services, and numerical phone numbers.

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When determining the distinctiveness of a trademark, prospective applicants should ask themselves:

  • What is the trademark?
  • What are the goods or services?
  • Who is the intended audience?

The examiner will consider the trademark as a whole, within the context of the goods or services, and from the perspective of the intended audience. The mark’s first impression on a casual consumer, who may be in a hurry, is also taken into account.

The Burden of Proof

The burden of proof lies with the applicant to demonstrate that the mark has acquired or inherent distinctiveness. The amount of evidence required depends on how obviously distinctive the mark is. If the mark is not clearly distinctive, substantial evidence is necessary to establish its distinctiveness.

It is important to note that contravention of Section 12 of the Act, which lists non-registrable trademarks, is not sufficient to prove lack of inherent distinctiveness. A trademark that is not deemed merely descriptive does not automatically mean it is distinctive. The distinction is binary – the mark is either distinctive or not. Applicants must provide enough evidence to demonstrate that their mark is distinctive. The degree of distinctiveness or reaching a specific threshold is not relevant.

Types of Evidence

Applicants have the option to submit factual and opinion evidence to support their claims.

Factual evidence is the strongest form of evidence and should go beyond simply stating the quantity of products sold or money spent on advertising. The evidence should demonstrate that the mark has become distinctive in the minds of the public due to extensive use and advertising.

Opinion evidence is considered cautiously by examiners but can be useful during the review process.

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Expert evidence is occasionally helpful but must meet certain criteria to be accepted. The evidence should be relevant, necessary, and properly qualified, and there should be no reason to exclude it.

Survey evidence may be valid in some cases, but its reliability and validity can be questioned since there is no opposing party to verify its accuracy.

Appealing the Examiner’s Decision

The examiner’s decision regarding distinctiveness is final, but it can be appealed to the Federal Court. Unlike systems in the US and UK, where appeals can be made to other boards within the trademark office, in Canada, appeals must go directly to the courts.

On appeal, new evidence can be submitted if the court deems it to be material and filling a gap or significantly different from the evidence previously presented.

Additional Resources for Applicants – Trademark Examination Manual (TEM)

The Trademark Examination Manual is a reference guide for trademark applicants and agents. It provides guidance on how examiners interpret and apply the legislation. Although the manual has no legal authority, it offers valuable information on the Office’s position regarding various trademark matters.

The manual is periodically revised in consultation with stakeholders to ensure consistency and predictability.

Registering Your Trademark

Registration is crucial as it grants the owner exclusive rights to use the mark across Canada, even if their business is not yet present nationwide. Registered marks receive full protection under the law, safeguarding the owner’s intellectual property. In contrast, common law marks only grant protection against competitors who “pass off” their goods or services as those of the owner within a specific market area.

Failure to register a trademark can jeopardize the protection and growth potential of a successful business. At Garrity Traina, we have over 40 years of experience helping trademark owners protect their intellectual property. We offer comprehensive services in trademark procurement, licensing, and enforcement.

To discuss your intellectual property and trademark needs, please contact us at Garrity Traina.