You can't get a trade-mark registration for a word that will
deceive consumers. Put into legalese, section 12 of the Canadian Trade-marks Act says
a trade-mark is not registrable if it is either "clearly
descriptive or deceptively misdescriptive ... of the character or
quality of the wares or services in association with which it is
used or proposed to be used..."
If a trade-mark applies the word "MILK" to a non-dairy
product, can that be considered deceptively misdescriptive? This
question came up in the trade-marks opposition case of Dairy
Farmers of Canada v Cytosport, Inc., 2014 TMOB
148 (CanLII), in which the Dairy Farmers of Canada opposed the
registration of the marks the trade-marks MONSTER MILK and MONSTER
MLK for use with "Dietary and nutritional supplements for use
in athletic training, namely for improving body strength and
building muscle, excluding ready to drink beverages."
The Dairy Farmers essentially argued that the average consumer
would believe that the drinks sold under the brand MONSTER MILK
would contain "real milk". In a wide-ranging
analysis, which covered the Food and Drug Act,
to consideration of Nourishing Coconut Milk Shampoo, as well as
references to "milk" in the Oxford Dictionary, the Board
ultimately decided that the average consumer would not be deceived,
since it would not be apparent which meaning of milk would apply in
the case of the MONSTER MILK brand.
This case illustrates the importance of strong affidavit
evidence in opposition proceedings: here, the applicant submitted
evidence from dictionary meanings, Google search results, and
shopping excursions to show common uses of the word MILK in
association with other non-dairy products.
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