Choosing a trademark requires an exercise of skill and creativity for companies and their marketing experts to grab customers' attention. However, a trademark that is strong in terms of marketing will not necessarily be a strong trademark from a legal standpoint. Here is a non-exhaustive checklist of points to verify before choosing your trademark.
Does my trademark have a geographic meaning?
The name of a geographic location, without any other possible meaning, is a weak trademark on its own, unless it has become distinctive through its use in Canada. Without proof of distinctive character, a trademark is unregistrable if the goods or services originate from the geographic location used as a trademark. For example, a bagel shop based in Montréal cannot register the trademark MONTRÉAL for its products unless it can prove that its use has become distinctive. If the goods or services do not originate from the geographic location, the trademark could potentially be registrable if it does not mislead the general public into the belief that the products originate from that location.
Does my trademark refer to a person's name?
It is possible to register invented names (the combination of a first and last name or a last name alone) unless it is the name of a person who is living or who has died in the past thirty years. For example, the name PAUL SMITH is commonly found in phone directories in Canada and is thus unregistrable on its own. First names alone can be registered provided that they are not confusing with prior trademark applications or registrations.
Does my trademark refer to the name of the goods?
A trademark that is the name of the goods in another language is not registrable in Canada. For example, ZAPATOS cannot be registered in Canada in association with shoe products since it means “shoe” in Spanish.
Does my trademark refer to the character or quality of the goods or services?
Trademarks that are clearly descriptive of the quality or character of the goods are unregistrable. For example, the trademark SUPERSET is clearly descriptive of the quality of telephone set products; the trademark THOR-O-MIX (read “thorough mix”) is unregistrable in association with cement products or similar products intended to be mixed. Similarly, trademarks that are deceptively misdescriptive are unregistrable. For example, a trademark letting customers believe that the product contains certain materials that are in fact absent is unregistrable. The same goes for trademarks that describe the production conditions, for instance, OVENCRAFT, for products baked in an oven. Only suggestive trademarks can be registered. GRO-PUP for animal food or WATERWOOL for clothing goods represent examples of trademarks that have been deemed to be suggestive, as opposed to descriptive, of the goods.
Do not forget that even if your proposed trademark meets the non-exhaustive criteria above, there remains one crucial element to verify: is my trademark confusingly similar to a prior trademark application or registration? To avoid running into problems, including possible legal claims, an availability search conducted on the Canadian Register of Trademarks and the actual Canadian marketplace is essential before applying to register a trademark or using the trademark in Canada.
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.
