Since June 2019, Canadian trademark examiners have been allowed to assess whether a trademark is distinctive (i.e., original). Distinctiveness is a measure of a trademark’s ability to distinguish one company’s goods or services from another’s.
The Trademarks Act, Section 2, provides for two situations in which a trademark can be said to possess distinctiveness: when the trademark “actually distinguishes” or differentiates a company’s goods or services from those of others (and is therefore inherently distinctive), or when the mark acquires distinctiveness through intensive use and becomes “adapted so to distinguish.”
The Trademarks Act does not prevent the registration of trademarks that may have low inherent distinctiveness — only marks that are not distinctive. But how do you determine whether your trademark has some inherent distinctiveness? Here are some things to consider:
- The meaning of the mark in its entirety
- The associated goods and services
- Whether other traders are commonly using an identical trademark in Canada for the same goods and services
- The point of view of an everyday user of the goods or services and as a matter of first impression
The inherent distinctiveness of a trademark refers to its originality. A trademark consisting of a unique or invented name, such that it can only refer to one thing, will possess more inherent distinctiveness than a word that is commonly used in the trade.
What’s not distinctive?
Here are a few examples of trademarks that are considered not inherently distinctive:
- Generic words or generic designs (e.g., using the word “ORANGE” or an image of an orange for fresh oranges)
- Clearly descriptive trademarks in English and/or French (e.g., using “FURNITURE STORE / MAGASIN DE MEUBLES” in association with the retail sale of furniture)
- Laudatory words and phrases (e.g., using “QUALITY TOMATOES” for tomatoes)
- Trademarks that are primarily geographic locations (e.g., London)
- Trademarks that are primarily a surname (e.g., Anderson)
- Trademarks consisting of one or two letters or numbers (e.g., GT, LE)
- Phone numbers
- Forms of business association (e.g., Ltd.)
- Internet TLDs and URLs
- Combinations of unregistrable elements (e.g., “ALFREDSON’S BEST CARROTS” for carrots)
Before adopting a trademark and investing in marketing, we strongly recommend that you ask a trademark agent to assess your chances of registering the mark. Contact our Trademarks team to learn more.
Author: Mihaela Dumitrean
Note: This article is of a general nature only and is not exhaustive of all possible legal rights or remedies. In addition, laws may change over time and should be interpreted only in the context of particular circumstances such that these materials are not intended to be relied upon or taken as legal advice or opinion. Readers should consult a legal professional for specific advice in any particular situation.