With Distinction: Addressing Distinctiveness Objections during Canadian Trademark Prosecution

---

November 19, 2020

The distinctiveness of a trademark has always been important in Canadian trademark law. However, prior to the June 17, 2019 amendments of Canada’s Trademarks Act, the inherent distinctiveness of a trademark itself was not considered by an Examiner during the examination of an application, outside of the assessment of confusion.

Now, under Canada’s amended laws, an Examiner may object to an application on the basis that the Registrar’s preliminary view is that the trademark is not inherently distinctive. This objection can be raised with respect to any application that had not yet been advertised in the Trademarks Journal by the June 17, 2019 coming into force date.

What is Distinctiveness?

Section 2 of Canada’s Trademarks Act defines “distinctive” as referring to any 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”.  This accords with the organizing principle of trademark law that a mark is first and foremost an indicator of source.

A trademark “actually distinguishes” by acquiring distinctiveness through use, resulting in distinctiveness in fact. A trademark that is "adapted so to distinguish" is one that does not depend upon use for its distinctiveness because it is inherently distinctive.

Traditionally, the issue of distinctiveness was only addressed in the context of a trademark opposition or a proceeding to cancel a registration on the basis that the underlying trademark was not distinctive.  In those cases, the Trademarks Opposition Board, or the Court, would attempt to determine whether a trademark was capable, in fact, of distinguishing the particular goods or services of a trader having regard to the relevant purchasing or consuming public.  This generally involved a review of evidence filed by parties as to use, if any, of the trademark at issue and any relevant third-party marks.

What changed with the amendments to Trademarks Act which took effect June 17, 2019?  Now an Examiner is permitted to object to any application if, in the view of the Examiner, the trademark is not “inherently distinctive”.

How is Inherent Distinctiveness Determined?

A trademark that is considered to have no inherent distinctiveness is not registrable; however, a mark that has a low degree of inherent distinctiveness is registrable.

How is the level of distinctiveness of a trademark assessed by an Examiner?

Although not an exhaustive list, the Canadian Intellectual Property Office (“CIPO”)  has provided, in its Trademarks Examination Manual, examples of trademarks that it considers to be not inherently distinctive. If a trademark meets one or more of these criteria, the Examiner will likely raise an objection to the registration of the application on the basis that the trademark is not inherently distinctive:

• names of geographic locations
• generic designs, for example a lightbulb for use with intellectual property services
• names of colours and colours applied to the surface of a three-dimensional object, if the associated goods are commonly in this colour
• one and two-letter or number trademarks and phone numbers
• surname(s)
• clearly descriptive words
• words and phrases that are laudatory or provide generic information
• a combination of unregistrable elements
• some “non-traditional marks”, such as the three-dimensional shape of any goods, a mode of packaging goods, sound, scent, taste, or texture.

An Examiner has wide latitude to determine whether a trademark is inherently distinctive.  As such, it is helpful to consider how the question of whether a trademark is “inherently distinctive” is addressed in other contexts.

As in other jurisdictions, an invented word or coined phrase is generally considered to be inherently distinctive; however, what about marks that are not comprised of invented word(s)?

Examination

The consideration of distinctiveness involves assessing whether or not the trademark can serve to identify the applicant as the source of the goods and/or services.

In ITV Technologies Inc. v. WIC Television Ltd., the Federal Court commented that “[t]he 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”.

The trademark is considered from the point of view of the first impression of the average Canadian consumer, and in association with the goods and services listed in the application.

Pursuant to the Trademarks Examination Manual, the Examiner should take the following into consideration when assessing the distinctiveness of a trademark:

• Should competitors be permitted to use the mark and does research demonstrate that competitors are using the mark in the marketplace?

There is no clear standard as when (or why) a competitor should be permitted to use a mark.  Certain aspects of distinctiveness (or a lack thereof), for example descriptiveness, would appear to be captured here.

If the mark is used in the trade by third parties, it is CIPO’s position that the average Canadian consumer would be less likely to be able to determine one single source as the origin of the goods and/or services. 

It is unclear what level of use is required.  In Bojangles' International LLC v. Bojangles Café Ltd., the Federal Court stated that a mark should be known in Canada to some extent at least to negate another mark's distinctiveness. 

• What if only one portion of the mark is considered not inherently distinctive? If other elements of the mark have some distinctiveness, then the trademark, as a whole, will be considered to have some inherent distinctiveness and therefore be registrable.
• Is the mark considered to be not inherently distinctive with respect to all of the goods and/or services in the application? If not, the objection can be limited to only these specific goods and/or services.
• If the applicant has filed evidence of distinctiveness, does the evidence establish that the trademark had acquired distinctiveness in Canada with respect to the goods and/or services at the filing date of the application? If the applicant has demonstrated acquired distinctiveness in some, but not all, of Canada, the resulting registration can be limited by province and territory.

Objections alleging that a trademark is not inherently distinctive have become one of the most controversial aspects of the changes to Canada’s trademark law due to the inconsistent manner in which CIPO has applied the objection and the lack of transparency as to the criteria which Examiners are applying in assessing distinctiveness.  There have been calls for CIPO to revise or adjust its practice and CIPO has appeared receptive to the concerns of trademark practitioners. 

However, at present, the only way to overcome an objection based on the allegation that a trademark is not inherently distinctive is to (i) argue that the trademark does possess at least some inherent distinctiveness; or (ii) for marks which were in use as of the filing date, file evidence to establish that the trademark had acquired distinctiveness as of such date through use in Canada.

If you have any questions, please feel free to reach out to any member of the CPST IP Trademark Team.

---