A recent decision of the Federal Court has emphasized that in order to
be distinctive a trademark does not need to be associated in the
minds of the consumers with a particular owner.
The applicant instituted an application alleging infringement of
its registered trademarks. An application proceeds on the basis of
affidavit evidence and there is no trial. The respondent denied
infringement but brought a cross-application to expunge the
applicant's trademarks on the basis, among others, that the
marks in issue were not distinctive of the applicant.
The applicant filed extensive evidence of the sale of its
products in association with its two registered trademarks but
there was no evidence that the applicant had established any
reputation relative to the trademarks. The wares in issue consisted
of t-shirts, sweatshirts, tank tops, mugs, fridge magnets, aprons,
hats and shopping bags which were primarily sold in the tourist
market in Canada. The judge described these wares as
"Canadiana" tourist merchandise.
The Expungement Proceeding
In order to show that the trademarks were not distinctive, the
respondent had to demonstrate that the trademarks were no longer
capable of distinguishing the applicant's wares from the wares
of others in the marketplace. The judge was not convinced that the
respondent had produced sufficient evidence to show this.
In addition, she said that the burden was on the respondent to
show a lack of distinctiveness. The applicant in the expungement
proceeding was not obliged to demonstrate the validity of its
trademarks. As a result, the application to expunge the trademarks
In the context of determining whether the respondents actions
were infringing the applicant had to show that the respondent was
using a confusing trademark. One of the factors to be considered is
the inherent distinctiveness of the trademarks. The judge observed
that case law made it clear that the distinctiveness is the most
important attribute of a trademark.
While the distinctiveness of the applicant's trademarks was
on the lower end of the spectrum the applicant's trademarks did
not need to be associated in the mind of a consumer with the
particular owner or registrant. The marks must simply be capable of
distinguishing the owner's wares in the marketplace from the
wares of competitors. Even a trademark with a low level of
distinctiveness has the ability to distinguish wares in the
When the judge reviewed all the evidence she found that the
respondent was infringing the applicant's trademarks.
This decision is consistent with the definition of
"distinctive" contained in the Act and existing case law.
A trademark is distinctive if the evidence demonstrates that it
distinguishes the product or services that is registered for use in
association with, from the products or services of others in the
marketplace. Generally, three conditions must be satisfied to show
distinctiveness: (1) the mark and a product are associated or
linked; (2) the owner uses the association or link between the mark
and its product and is selling the product; and (3) the association
or link enables the owner of a mark to distinguish its product from
that of others.
There are many ways that trademark owners can seek to ensure
that their trademarks are distinctive and not enough space to deal
with them all in this article. However, one simple thing that can
be done is to use a trademark notice on the goods.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).