Canadian Trade-mark Law/Registrable Marks

Section 35 of the Act warns that a registrable trade-mark may comprise of elements that, on their own, are not individually registrable. But nonetheless, over time these elements may gain distinctiveness to be registrable.

First Names and Family Names

Under section 12(1)(a) marks that are "primarily merely" the name or surname of an individual who is living or has died within the past 30 years are unregistrable unless it can be shown that the mark can be used significantly, has acquired reputation, or has secondary meaning.

"Descriptiveness"

Under section 12(1)(b) of the Trade-marks Act, Trade-marks that are "clearly descriptive" or "deceptively misdescriptive" in English or French are not registrable.

12. (1) Subject to section 13, a trade-mark is registrable if it is not ... (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares 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; ... (2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.

• corrupted spelling is irrelevant to the analysis

Clearly descriptive

The test to determine if a set of words in a mark are "clearly descriptive" depends on the immediate or first impression of the words as a whole rather than a parsed analysis of the potential meanings of the word. This requires that the words be taken in the context of similar wares or services. Simply put, words are "clearly descriptive" if they are "related to an intrinsic quality, character or be material to the composition of the goods or products, or describe a feature, trait or characteristic, or function/result of the goods or service" (9-13 of Hughes on Trade-marks)

In the Drackett Co. of Canada Ltd. case the Court found that "once-a-week" slogan to be clearly descriptive of the product which was a drug that was to be taken once every week.

Descriptive of Quality

Descriptive of Character

First Impression upon ordinary user or dealer

Deceptively misdescriptive

This section is meant as a means to prevent a mark from misleading the public to believe that the product possesses qualities that it does not have. Names that suggest a product was from a certain country, made in a certain fashion, or contain a certain product, are generally discounted on this ground.

In Lake Ontario Cement Ltd. v. Registrar of Trade-marks (1976), 31 C.P.R. (2d) 103, the Court held that the word "Premier" for a mark for concrete was not deceptively misdescriptive. The word suggests a quality that the product could potentially possess. Moreover, purchasers of the product would unlikely have purchased the product on the basis that they believed the concrete to be the best in the industry. The word, however, was found to be clearly descriptive and thus was not registrable.

Languages

Any words in a language other than French or English that would be considered clearly descriptive or deceptively misdescriptive cannot be excluded under section 12(1)(b). In Gula v. Manischewitz Co. (1947), 8 C.P.R. 103, a company making crackers under the mark "tam tam" was challenged by another cracker company with a product called "tum tum". The name "tam tam", which was Hebrew for "taste" or "tasty", was allowed on the basis that it was not a recognizable word in the English or French language.

Marks made up of a combination of English and French are not usually subject to this section either. Only if the English or French component of the mark, on its own, is sufficiently descriptive then it will be subject to the section. However, merging of the two languages to produce a word or phrase incomprehensible in each language will not apply. In Coca-Cola Co. v. Cliffstar Corp. (1993), 49 C.P.R. (3d) 358, a company tried to register the mark "Le Juice", which the judge held was not identifiable in either language.

Disclaiming

If part of a mark is found clearly descriptive then, by virtue of section 35, that part of the mark can be disclaimed from protection, leaving the rest of the mark protected. This, however, is not true of marks found deceptively misdescriptive.

Descriptive of Use

Under section 12(1)(c), marks, in any language, that are named in connection with the way the wares or services are intended to be used are not registerable.

Confusion

If a mark is suggestive of another mark there is a potential that the mark may be unregistrable. Marks that are "confusingly similar" to a registered or pending mark are unregistrable under section 12(1)(d). A similar mark depends on a number of factors including whether the mark has visual or auditory similarities, whether it suggests a similar idea, or whether they are used to market similar services or wares.

Prohibited Marks

Section 9(1) lists marks that are prohibited. Most of them are government related marks or are marks that must be protected for public policy reasons. These marks include:

• official government marks
• marks of the Royal Family
• badges and crests of the RCMP and Armed Forces
• emblems and names of the Red Cross, the Red Crescent, and the United Nations;
• flags and symbols of other countries
• marks that are "scandalous, obscene or immoral",
• marks that "falsely suggest a connection with any living individual"
• portraits or signatures of individuals alive or dead within the last 30 years.

"Prohibited marks have different requirements and are not obtained through the same channels as the trade-marks discussed above. Thus, a prohibited mark is not registered but is merely published in the Trade-marks Journal with a view to giving public notice of its adoption and use by the requesting party. Moreover, unlike an application for a trade-mark, a request for publication of a prohibited mark is kept confidential until the date fo publication in the Trade-marks Journal." (Page 2-7 Odutola on Canadian Trade-mark Practice)