General
For an application for the registration of a trademark not to be refused, the trademark must have some degree of inherent distinctiveness or must have acquired distinctiveness at the time of filing of the application. The Registrar's authority to raise an objection that a trademark is not inherently distinctive stems from paragraph 32(1)(b) of the Trademarks Act (the "Act") which states:
An applicant shall furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application for its registration if any of the following apply:
the Registrar's preliminary view is that the trademark is not inherently distinctive
The term "distinctive" is defined in section 2 as:
in relation to a trademark, describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them.
Paragraph 37(1)(d) provides that an application for registration shall be refused if the Registrar is satisfied that the trademark is not distinctive. If the Registrar is not satisfied that the trademark is not distinctive, then the application must be advertised.
Distinctiveness
As stated in H.G. Fox, Canadian Law of Trade Mark, 3rd ed. (Toronto: Carswell, 1972), at 25:
the essence of a protectable trade mark and the foundation of trade mark law...is and always has been distinctiveness. 'Distinctiveness means some quality in the trade mark which earmarks the goods so marked as distinct from those of other producers of such goods'".
The Act provides for two different situations in which a trademark can be said to possess distinctiveness, the first being a trademark that "actually distinguishes" and the second being a trademark "adapted so to distinguish," the goods or services of the trademark owner from the goods or services of others.
On the one hand, a trademark "actually distinguishes" by acquiring distinctiveness through use, resulting in distinctiveness in fact. On the other hand, a trademark that is "adapted so to distinguish" is one that does not depend upon use for its distinctiveness because it is inherently distinctive [see Astrazeneca AB v. Novopharm Ltd., 2003 FCA 57 (CanLII) at para 16].
Inherently distinctive
The phrase "not inherently distinctive" in paragraph 32(1)(b) refers to a trademark having "no inherent distinctiveness" (not registrable) as opposed to a trademark possessing a "low degree of inherent distinctiveness" (registrable).
There is a spectrum of inherent distinctiveness, ranging from no inherent distinctiveness to high inherent distinctiveness. Trademarks possess some inherent distinctiveness when nothing about them refers the consumer to a multitude of sources when assessed in relation to the associated goods or services. Where a trademark may refer to many sources, it is considered to have no inherent distinctiveness.
As stated by the Federal Court in ITV Technologies Inc. v. WIC Television Ltd., 2003 FC 1056 (CanLII), aff'd 2005 FCA 96 (CanLII) at paras 119-121:
The inherent distinctiveness of a mark refers to its originality. A mark that is composed 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.
For a trademark to lack inherent distinctiveness, it is not necessary that the trademark contravene paragraphs 12(1)(a), (b) or (c) of the Act. For example, in Canadian Council of Professional Engineers v. Apa - The Engineered Wood Assn., 2000 CanLII 15543 (FC), the Federal Court noted that
while it may be true that a purely descriptive or a deceptively misdescriptive trademark is necessarily not distinctive, it is not correct to hold that merely because a mark is adjudged not to be either purely descriptive or deceptively misdescriptive, it is therefore distinctive.
Where a trademark does not have inherent distinctiveness, it may still acquire distinctiveness through for example, continuous and long-standing use. To establish this acquired distinctiveness, it must be shown that the trademark has become known to consumers as originating from one particular source.
Examination
Any assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in association with the goods or services assuming no use (as defined in section 4 of the Act). In other words, is it the sort of trademark which can distinguish the source of the goods or services without first educating the public that it is a trademark?
One of the questions an Examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders should be able, in the ordinary course of their businesses, to use the same trademark in association with the same goods or services.
While the fact that other traders are not currently using a trademark in association with their goods or services is not determinative, it is one of the factors that should be considered in assessing distinctiveness. The ultimate question is whether other traders should be free to use that trademark in association with their goods and services.
Alternatively, if research points to use in Canada by others in the trade, the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source. A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources (Compulife Software Inc. v. Compuoffice Software Inc., 2001 FCT 559 (CanLII) at para 19).
The question of whether a trademark is distinctive (whether inherent or acquired) cannot be considered in the abstract but rather must be considered in relation to the goods or services for which registration is sought. It must also consider the first impression of the average Canadian consumer of those goods or services.
When raising an objection, examiners must provide a clear explanation why the trademark is not inherently distinctive. Examiners must also indicate whether the objection relates to all the associated goods or services, or only to some (in which case examiners should specifically identify those goods/services to which the objection relates). Moreover, if the Registrar's preliminary view is that the trademark is not inherently distinctive due to use of the trademark by others in the marketplace, that view must be informed by objective evidence which should be provided to the applicant, including the results of any research by the examiner. If only a portion of the trademark is considered not inherently distinctive, but other portions have at least some inherent distinctiveness, the trademark as a whole will be considered to have some inherent distinctiveness and an objection under paragraphs 37(1)(d) and 32(1)(b) of the Act will not be raised.
Examples
The following sections provide examples of trademarks that would, generally, be considered to have no inherent distinctiveness. What follows is not an exhaustive list; examiners must apply the relevant test on a case-by-case basis. Moreover, the examples are meant for illustrative purposes under the current legislation and in no way comment on the registrability of trademarks registered under previous legislation. If an objection under paragraphs 37(1)(d) and 32(1)(b) of the Act is raised, it will be because it is the Registrar's preliminary view that the trademark is not inherently distinctive.
Geographic locations
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services (see London Drugs Limited v. International Clothiers Inc., 2014 FC 223 (CanLII):
This Court has consistently held that geographic designations … are not inherently distinctive and should not be accorded a high degree of protection unless, of course, they have acquired distinctiveness over time. Nobody can claim a monopoly on a geographic name, especially when it is as well-known as London. The best-known case in that respect is California Fashion Industries Inc. v. Reitmans (Canada) Ltd. (1991), 38 C.P.R. (3d) 439 (Fed. T.D.) …
In any event, subsequent cases from this Court and from the Court of Appeal have confirmed that geographical names are not inherently distinctive, even when associated with wares and services that are not typically associated with that area: see Wakefield Realty Corp. v. Cushman & Wakefield Inc. (2004), 35 C.P.R. (4th) 460 (F.C.), [2004 FC 210 (CanLII)] at para 42, aff'd (2004), 37 C.P.R. (4th) 212 (F.C.A.) [2004 FCA 415 (CanLII)], at para 6; Prince Edward Island Mutual Insurance Co. v. Insurance Co. of Prince Edward Island (1999), 86 C.P.R. (3d) 342 (Fed. T.D.) [1999 CanLII 7462 (FC)] at paras 32-33.
Generic designs
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner. For example, an ordinary representation of grapes and vine leaves for wine would not be considered capable of distinguishing one trader's wine from that of another. Other examples of designs common to the trade include cats, dogs or other animals for pet food or veterinary services, lightning flashes for electrical apparatus, orchard scenes for fruit.
Names of colours
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour (e.g. orange in association with outerwear; white with paper; red with toy fire engines, yellow with tennis balls).
One- and two-letter or -number trademarks
Single letter or number trademarks will generally be considered not inherently distinctive, due to the likelihood of other traders needing to use a simple, unembellished single letter or number in the form of initials, abbreviations, or to indicate an amount.
Two-letter or number trademarks can be inherently distinctive, but those commonly used in a specific field are generally not inherently distinctive. For example, GT and LE are used by a number of traders in the vehicle industry to indicate performance or limited-edition goods and do not serve to distinguish.
Furthermore, the addition of such letter(s) or number(s) to a trademark that is not inherently distinctive will not normally render the trademark as a whole inherently distinctive.
English and French
Trademarks that consist of words/phrases that are clearly descriptive in both English and French lack inherent distinctiveness (e.g. furniture store / magasin de meubles in association with the retail sale of furniture, tasty frites in association with french fries).
Foreign characters and words
The examination of trademarks that consist of non-Latin characters or letters must consider the average Canadian consumer of the associated goods and services who has knowledge of that language. A ground for rejecting an application may exist where the trademark is in non-Latin characters and this consumer is likely to understand the meaning of these word(s), whereby the ordinary signification to them is something that should be available for use by other traders to describe their goods or services.
Examples of such specific goods or services include newspapers targeted at specific portions of the community, translation services, or language training.
When words that lack inherent distinctiveness are combined with words in another language that have the same or similar meaning, the resultant combination may also lack inherent distinctiveness, especially in fields where it is common to include indications regarding characteristics of the goods or services in multiple languages (e.g. size taille talla in association with clothing).
Multiple surnames
Two or more surnames that are not, individually, inherently distinctive are generally considered inherently distinctive when they are combined. The need for other traders to use the combination in relation to similar goods or services is relatively low. For example, smith johnson, thompson spratley are combinations that are, generally, inherently distinctive.
Names and honorifics
The addition of common honorifics, either pre- (e.g. Mrs., Mr., Dr., Dame, Sir) or post-nominally (e.g. ESQ.) to a surname or full name will generally not render a trademark inherently distinctive.
Laudatory words and phrases
Words or phrases that laud the worth, importance or value of a good or service are generally not inherently distinctive. For example, the following non-exhaustive list includes words and phrases that are generally not inherently distinctive:
- Ultimate
- Authentic
- Original
- Quality
- Value
- Wonderful
- Terrific
- World's best
- Canada's best
These examples are in addition to words or phrases that are considered clearly descriptive under paragraph 12(1)(b) of the Act.
Provides generic information
Trademarks that serve only to provide general information about or on any goods or services are not inherently distinctive e.g. fragile in association with labels to be affixed to goods or packaging; contents are hot for takeout restaurant services; the biohazard symbol in association with containers that could contain biohazardous materials; or the recycle symbol on plastic bags.
Combinations of unregistrable elements
Trademarks for which an objection is raised under section 12 of the Act, particularly paragraphs 12(1)(a), (b) and (c), are considered not inherently distinctive. As well, the combination of words or designs that would, independently, be considered unregistrable under these paragraphs are generally not considered to be inherently distinctive.
For example, the following trademarks would be considered not inherently distinctive:
- Alfredson's best (in association with the goods "carrots") which consists of a surname and a word that is a laudatory epithet and considered to be clearly descriptive;
- Best carrots (in association with the goods "carrots") which consists of a word that would be considered clearly descriptive in combination with a word that is the name of the goods;
- Alfredson's carrots (in association with the goods "carrots") which consists of primarily merely a surname and a word that is the name of the goods;
- Alfredson's best carrots (in association with the goods "carrots") consists of a combination of primarily merely a surname, a laudatory epithet, and the name of the goods.
Paragraphs 12(1)(a), or (b) of the Act
If an objection is raised because the trademark is primarily the name or surname under paragraph 12(1)(a) of the Act or because it is clearly descriptive or deceptive misdescriptive under paragraph 12(1)(b), the Examiner will also raise an objection under paragraphs 37(1)(d) and 32(1)(b). If an objection is raised only under paragraph 12(1)(c) because the trademark is the name in any language of any of the goods or services, the examiner will not raise an objection under paragraphs 37(1)(d) and 32(1)(b) since the name of the goods or services can never acquire distinctiveness.
Possessive determiners
Adding possessive determiners such as my, our or your to a clearly descriptive trademark does not render it inherently distinctive, e.g. Our finest lemonade, Your number one hardware store.
Internet TLDs, and URLs
A trademark composed solely of a top-level domain ("TLD") in association with the operation of a domain-name registry or registrar services is not inherently distinctive, as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services.
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark. For example, www.buyposters.com in association with the sale of posters is not inherently distinctive because the addition of "www." and ".com" to the clearly descriptive portion "buyposters" does not render the trademark as a whole inherently distinctive.
Phone numbers
A trademark that consists of a numerical telephone number is not inherently distinctive as it serves only to identify the number assigned to a telephone; it does not inherently identify a source of goods or services.
Forms of business association
Words and abbreviations that describe the legal form of a business such as: Limited, Company, Partnership, LLC, Ltd., GmbH, etc. generally are not inherently distinctive and do not add to the distinctiveness of a trademark (for example, in D & S Meat Products Ltd. v. Peameal Bacon of Canada Ltd., 2013 TMOB 21 (CanLII) the Trademarks Opposition Board found that the addition of "LTD." did not render the trademark registrable).
Colour(s) applied to the surface of a three-dimensional object
Trademarks that consist of colour(s) applied to the surface of a three-dimensional object will generally not be considered inherently distinctive if research shows that they are commonly or generically used by a number of traders in the related marketplace. For example, the colour red applied to the surface of a fire hydrant lacks any inherent distinctiveness in association with the goods "hydrants" or the services "delivery of water for fire suppression purposes" but would be considered to have some inherent distinctiveness in association with "retail sale of hot peppers".
Overcoming an objection raised under paragraphs 37(1)(d)/32(1)(b)
An applicant may respond to an objection that a trademark is not inherently distinctive by submitting arguments that the Registrar's preliminary view should not be that the trademark is not inherently distinctive. Alternatively, an applicant may overcome an objection by filing evidence that the trademark was distinctive at the filing date of the application for its registration. Please refer to section XX.XX.XX of this Manual on assessing evidence of acquired distinctiveness.