In Canada, there are a number of important grounds of registrability of trademarks.
Primary among these grounds is that in order to be registerable a trademark must not be descriptive “clearly descriptive” or “deceptively misdescriptive” of the character or quality of the associated goods or services.
Section 12 (1) of the Trademarks Act provides
Subject to subsection (2), a trademark 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 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;
Examples of trademarks that would be clearly descriptive if used in association with BEER include
The issue as to whether the trademark is clearly descriptive of the quality of the Applicant’s wares must be considered from the point of view of the average purchaser. The word “clearly” means “easy to understand, self-evident or plain”. In order to perform this analysis, the Mark must not be dissected into its component elements and carefully analyzed but must be considered in its entirety as a matter of immediate impression.
Trademarks that would be deceptively misdescriptive of the character or quality of the goods if applied to BEER include
GERMAN BEER (for beer not made in Germany, and of course, if it were made in Germany, then the mark would be clearly descriptive and unregistrable)
SOLID BEER (hard to drink solid beer)
HEALTHY BEER (likely a misdescriptive claim)
MONKS BREW (if not made by monks this is deceptively misdescriptive, and if true, it is clearly descriptive).
Many applicants for a Canadian trademark registration will receive an examiner’s report that refuses registration on the basis that the proposed mark is not registrable under s. 12(1) of the Trademarks Act.
We can help
The mere fact that the applicant has received a preliminary refusal is not fatal. Often, the examiner’s objection can be overcome.
It is important to respond to the examiner’s objection with a solid, well-reasoned argument that addresses the key issues under Canadian trademark law.
Contact us for a free assessment of the prospects for overcoming the examiner’s objection and securing registration of your trademark in Canada.