Registrability ®
Previously, I wrote about why you should register your trademark. But, is your brand name registrable under the Trademarks Act?
Many business people and brand owners are unaware of the constraints relating to the types of trademarks that cannot be registered under the Act. The right to registration is not inherent in any trademark and depends upon compliance with the Act. The Act sets out characteristics which may preclude a business from obtaining a registration.
Brand owners must be aware of these restrictions when developing their brands since registration will not be possible if the mark contravenes the Act. Further, if there are issues relating to compliance this can add materially to the cost of prosecuting a trademark application.
A trademark is not registrable if it is:
(a) A Name or Surname – a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;
**There are exceptions to this rule which we will delineate [see Tim Horton’s]
(b) Clearly Descriptive or Deceptively Misdescriptive – whether depicted, written or read aloud, either clearly descriptive or deceptively misdescriptivein the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
** i.e. DRINKING WATER for bottled water, or the basis on which GOOGLE may lose registrability where the brand name becomes so ubiquitous it becomes a verb or noun descriptive of the service or good itself.
(c) The Name of the Goods or Services – the name in any language of any of the goods or services in connection with which it is used or proposed to be used;
**i.e. VIN for wine
(d) Confusing – confusing with a registered trademark;
** i.e. TIMMY’S DONUTS or McRonald’s
(e) A Prohibited Mark – a mark of which the adoption is prohibited on the basis it consists of or resembles a prohibited or official mark as well as hallmarks and other well-known marks indicative of quality or origin;
(f) A Plant Breeders’ Denomination – a denomination under the Plant Breeders’ Rights Act the adoption of which is prohibited;
(g) A Geographical Indication for Wine – in whole or in part a protected geographical indication, where the trademark is to be registered in association with a wine not originating in a territory indicated by the geographical indication; or
(h) A Geographical Indication for Spirits – in whole or in part a protected geographical indication, where the trademark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication;
(i) A Geographical Indication for an Agricultural Product or Food – in whole or in part a protected geographical indication, and the trademark is to be registered in association with an agricultural product or food – belonging to the same category as the agricultural product or food identified by the protected geographical indication – not originating in a territory indicated by the geographical indication;
(j) An Olympic or Paralympic Mark – a specified Olympic or Paralympic mark the adoption of which is prohibited by Olympic and Paralympic Marks Act.
A trademark that is not registrable by reason of paragraph (a) or (b) is registrable if it has been so used in Canada by the applicant or its predecessor in title as to have become distinctive at the date of filing an application for its registration. This is referred to as acquired distinctiveness or secondary meaning but to take advantage of the exception the applicant must file proof of acquired distinctiveness which can be difficult, time consuming, and expensive. There are no other statutory exceptions to the above limitations on registrability.
If a mark is not registrable it will be difficult, if not impossible, to protect and may not be a good choice, especially given the new online economy where gatekeepers such as Facebook or Amazon require a Trademark Registration in order to cooperate with Brand Owners.
If you have any questions or concerns please contact me direct at [email protected]
Daniel Nashid
Barrister & Solicitor
416.892.2509
[email protected]