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
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
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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general guide to the subject matter. Specialist advice should
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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.
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