When creating new trade-marks, a business' primary consideration is usually the attractive force of the mark. After all, a trade-mark is designed to distinguish a business' goods and services from those of others. However, it is also important to consider how easy it will be to register the trade-mark and to assert exclusive rights in the mark to prevent others from using it.
The strongest marks in a legal sense are ones that are unique. In that regard, coined or invented words are often preferable to marks composed of ordinary words. The Canadian Intellectual Property Office and courts hesitate to give one business a monopoly over commonly used words that could place competitors at a disadvantage. In fact they will refuse to register a trade-mark that is clearly descriptive of the goods and services for which registration is sought, or the conditions of or persons employed in their production or of their place of origin, in accordance with Section 12(1)(b) of the Trade-marks Act. For example, the Federal Court of Appeal recently refused to register TEACHERS' as a trade-mark of the Ontario Teachers' Pension Plan Board in association with "administration of a pension plan, management and investment of a pension fund for teachers in Ontario" on the basis that the mark was clearly descriptive of the associated services (Ontario Teachers Pension Plan Board and the Attorney General of Canada 2012 FCA 60).
In addition to being unregistrable, it is difficult for businesses to prove a reputation and common law rights in descriptive trade-marks, which is required in order to succeed in a claim for passing-off.
Registration of deceptively misdescriptive trade-marks will also be denied in order to prevent the public from being misled.
To avoid creating clearly descriptive and deceptively misdescriptive trade-marks, the following points should be borne in mind when new marks are being developed:
- A combination of words that does not have a dictionary meaning can still be clearly descriptive or deceptively misdescriptive if each portion of the mark has a well known meaning in English or French. For example, the mark "SUPERSET" for telephone instruments.
- In assessing descriptiveness, the English and French languages as spoken internationally, not just vocabulary used in Canada, are relevant.
- A mark can be descriptive based on either its sound or appearance or both. Therefore, a design mark that depicts the goods or services associated with the mark can be unregistrable.
- A mark with both word and design elements is unregistrable if, when sounded, the word elements are clearly descriptive or deceptively misdescriptive of the associated goods or services and are the dominant feature of the mark.
- Laudatory words, such as SUPER and QUALITY, are considered descriptive terms.
- Marks which merely make a skilful allusion or indirect reference to a character or quality of the wares or services, or to the conditions of or the persons employed in their production or their place of origin, are registrable. For example, the trade-mark GRO-PUP for dog food is often cited as an example.
Through long term use, it is possible for a descriptive mark to become distinctive of a business' goods or services in the public's mind and thus to function as and be registrable as a trade-mark.
In addition to clearly descriptive and deceptively midescriptive marks, the Trade-marks Act also forbids the registration of trade-marks that are:
- Primarily merely the name or surname of a living individual or a person who died within the past 30 years (unless such marks have acquired distinctiveness over time).
- The name in any language of any of the wares or services with which the mark is used or proposed to be used.
- A mark that too closely resembles a mark the adoption of which is prohibited under section 9 of the Trade-marks Act. These include among others, the Royal Arms; certain arms, crests or flags of Canada or a province or municipality; the words United Nations or the official seal or emblem thereof; the emblem of the Red Cross or Red Crescent; certain badges, crests, emblems or marks adopted by public authorities in Canada; any scandalous, obscene, or immoral word or device.
- A mark that has come to designate the kind, quality, quantity, destination, value, place of origin or date of production of any of the wares or services with which the mark is to be used. For example, an application to register of the word mark "GLEN BRETON" in association with whisky distilled in Canada was contested (unsuccessfully) by the Scotch Whisky Association on the basis that "glen" had come to designate Scotland as the place of origin of whiskies bearing that name.
When developing new trade-marks, businesses should keep these points in mind to help them select registrable and enforceable trade-marks. In addition, it is highly advisable to obtain a legal opinion as to whether a new trade-mark is likely to cause confusion with another party's existing trade-mark or trade-name to reduce the risk of a trade-mark infringement or passing-off claim.
The foregoing provides only an overview. Readers are cautioned against making any decisions based on this material alone. Rather, a qualified lawyer should be consulted.
© Copyright 2012 McMillan LLP