Is your trademark distinctive?
A trademark must be “distinctive“. Put another way, it is not possible to register as a trademark something which is ‘not distinctive’. This requirement flows directly from fundamental principles: the purpose of a trademark is to distinguish the goods or services provided to customers by the applicant, from goods or services provided by others.
Distinctiveness – or more accurately ‘lack of distinctiveness’ – has taken on increased importance in Canadian trademark prosecution since 2019 reforms, as applications are now being examined for distinctiveness.
Many Canadian trademark applications now receive a ‘lack of distinctiveness’ objection from the trademark Examiner at CIPO, and this objection must be overcome by the applicant if their application is to proceed to registration.
Inherent and acquired distinctiveness
Distinctiveness may be either:
- inherent, or
A trademark which is inherently distinctive is distinctive on first impression without any further evidence or argument.
Items which generally lack inherent distinctiveness and hence cannot be registered as a trademark are:
- geographical names, even if the place is not known for these goods or services (for example “Montreal Wine is not inherently distinctive, even though Montreal is not a hot bed of wine-growing)
- generic designs (for example any common ‘icon’ like a clock, or checkmark, or $)
- names of colours (for example “Blue” for water)
- one and two-letter or number phrases (for example, VF Trucking, or 39 Trucking)
- laudatory words (for example, Good, Best, Ultimate, …)
An application which contains any of these elements will receive a ‘lack of distinctiveness’ objection from the Examiner.
A mark may acquire distinctiveness through use over a number of years, if the applicant can establish by way of evidence that the mark has now acquired distinctiveness which it did not inherently have in the view of ordinary consumers. Proving acquired distinctiveness is an expensive, difficult process, and at a minimum requires years of prior use of the mark.
Responding to Objections
Lack of distinctiveness objections are new in Canadian trademark prosecution practice. While this has always been a grounds upon which a mark was not registrable, previously it was not considered by trademark examiners during prosecution.
As the law is in flux, they represent a significant challenge for applicants, as well as their trademark agents and the Examiners.
The applicant must respond to a lack of distinctiveness objection in a timely manner. If the applicant does not, the application will be deemed abandoned.
The applicant’s response to the objection must contain a reasoned analysis as to why the proposed mark does not lack inherent distinctiveness. Note that the issue is whether the proposed mark does or does not lack inherent distinctiveness (not, whether it is or is not distinctive).
Ultimately, the judicial requiement is that the onus is on the Examiner to establish the lack of inherent distinctiveness – and if the Examiner does not meet this onus, the application should be allowed to proceed to publication. However, for cost-sensitive applicants, it is important for the applicant to address lack of distinctiveness issues as emphatically and thoroughly as possible to ensure timely and cost-effective prosecution of the application. Accordingly, it is very important to submit at first instance a thorough, well-reasoned, and well-referenced response to any ‘lack of inherent distinctiveness’ objection. And sometimes, it is important to simply abandon applications for marks that lack inherent distinctiveness and have not yet acquired distinctiveness.
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