A trade-mark is a mark that is used by a person for the purpose of distinguishing goods or services from those of others. As the function of trade-marks is to distinguish the origins of goods and services, trade-marks must be distinctive.
We sometimes see clients seeking to register a trade-mark that merely describes the goods or services associated with the mark, for example CANADIAN GRAINS for use on grains. Such marks are generally not registrable due to lack of distinctiveness. The Trade-marks Act (Canada) provides that a trade-mark is not registrable if it is clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with the mark, unless the mark has acquired distinctiveness (i.e. a secondary meaning that enables the consumers to recognize the mark as an indicator of origin, such as XEROX for copy machines) through use in Canada. Secondary meaning may be acquired through long-term use and evidence of a considerable amount of marketing of the good or service in association with the descriptive mark. However, to avoid the trouble of having to submit abundant evidence to the Canadian Intellectual Property Office to establish the acquired distinctiveness of a mark, if any, you should adopt an inherently distinctive trade-mark, which is on its face registrable.
The inherent distinctiveness of a trade-mark means the extent to which the mark describes the nature, character or quality of goods or services. A mark has high inherent distinctiveness if it is unrelated to the associated goods or services (for example REEBOK for sports footwear and apparel). On the contrary, a mark has low or no inherent distinctiveness if it describes the nature, character or quality of goods or services (for example HEARING CENTRE for hearing aid equipment or hearing health services). The more inherent distinctiveness a mark has, the stronger it is in the sense that it is easier for the trade-mark owner to assert that a third party using a visually or phonetically similar mark causes confusion among the consumers as to the origin of goods or services and therefore constitutes trade-mark infringement.
In summary, a trade-mark with low distinctiveness may be either unregistrable or gives weak protection to the trade-mark owner with respect to the enforcement of their trade-mark rights. It is very important, when choosing a trade-mark, to adopt a strong mark with high inherent distinctiveness in order to aquire better trade-mark protection.
By Sandy Song
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