The Canadian Trade-marks Act prohibits applicants from registering marks that are clearly descriptive of the character or quality of the products or services that are associated with those marks.
This is no doubt what any non-Canadian trade-marks lawyer would expect. However, what might come as a surprise is that Canadian examiners appear to take a non-conventional view about the meaning of the word "clearly" when it comes to descriptiveness.
Clearly Descriptive
Canadian examiners cannot object to an application on the basis of descriptiveness unless the mark is "clearly" descriptive. The word "clearly" is important because it provides some flexibility for registering suggestive marks that might otherwise be unregistrable.
Case law has clarified that the word "clearly" means "plainly" or "evidently". The Examination Manual helps too, by directing Canadian examiners to ask themselves "What, as a matter of first impression, does the trade-mark tell the potential dealer in, or purchaser of, the wares or services?", and "Does the mark tell them what the wares or services are, or describe them or describe a property which is commonly associated with them?".
If the answer to the last question is "yes", the examiner is required to refuse the application.
Did they ask the question?
There have been several cases recently where the examiners have allowed applications for marks which certainly appear to have crossed the "clearly" descriptive threshold.
For example, an applicant recently applied to register SIMPLY PURE WATER in association with—you guessed it—water. The examiner actually allowed the application, concluding somehow that the mark was not clearly descriptive of water. A competitor opposed the application and was successful: the Canadian Trade-marks Opposition Board stepped refused the application.
Not to be outdone, a securities brokerage firm applied to register WEBBROKER for its online brokerage services. Once again the examiner approved the application. Another competitor stepped up and opposed the mark, and the Opposition Board again refused the application.
Similarly, an applicant recently applied to register BETTER THAN BOUILLON in association with soup and soup mixes. This one made it past the examiner too, so once again a competitor opposed the application, and won. The Opposition Board agreed that the mark was a laudatory phrase that described a quality of the applicant's products.
Fourth time lucky.
Then came another application, this one for POWER BREAKFAST in association with waffles, food bars and breakfast cereals. The examiner approved the application, a competitor opposed it, and this time Opposition Board allowed it.
As a result, the applicant will soon be granted a monopoly over the term POWER BREAKFAST, despite the fact that "power breakfast" generates hundreds of thousands of hits through GOOGLE and defined in several online dictionaries.
It's unclear if the opponent will appeal the decision, but there are no doubt a number of food companies in Canada that will be interested in the outcome.
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