Distinctiveness in Registered Trademarks

Purpose of Registration

Registered trademarks are different from common law trademarks where you have rights to trademarks if you can show you have established use and recognition. The point of registration is that it gives you rights and remedies that are above those available at common law.

With extra rights, come extra restrictions. The purpose of imposing additional requirements on registrable trademarks is to ensure that all persons in the marketplace can use the names and descriptions of their goods and services without a claim being made that they are proprietary. For example, we as a society don’t want someone to be able to trademark the word apple in the context of the actual fruit because that would take that word away from the general public’s use and only allow one person or corporation to use it. To guard against this, the Registrar of Trademarks (the “Registrar”) has to balance what they allow to be taken away from the public and what they will allow to be trademarked.

An examiner’s job when faced with an application for registration is to, among other things, look at the application and see if the trademark on its face or through acquisition has distinctiveness so as to be registrable.

Two Types of Distinctiveness – Acquired and Inherent

Trademarks must be distinctive and not merely descriptive in order to be registrable.

The Trademarks Act (the “Act”)[1] provides for two different situations in which a trademark can be said to possess distinctiveness. An applicant can claim that a mark has acquired distinctiveness or that it is inherently distinctive.

The difference between acquired and inherent distinctiveness is that one is developed through use and the other is intrinsic to the mark such as an invented word.[2] To establish acquired distinctiveness, an applicant must show that the trademark has become known to consumers as originating from one particular source.[3] In contrast, inherent distinctiveness refers to a mark’s originality such that the mark can only refer to one thing.[4] To establish inherent distinctiveness, the trademark must not be associated with any sources related to the good or service the applicant is applying to have their trademark registered with.

For example, before Apple computers associated the word “Apple” with computer products and services, consumers did not have a prior association of the word with computers. The trademark was inherently distinctive. Now, however, the word “Apple” has developed distinctiveness by being associated in the minds of consumers with computer products and services. Now the trademark has acquired distinctiveness.

Determining whether a trademark has distinctiveness is a determination of fact.[5] Merely descriptive words will not have distinctiveness. Acquired distinctiveness is established with evidence that consumers have come to associate the trademark with the relevant goods or services. In contrast, the closer a trademark gets to being completely random, the more likely it is to have inherent distinctiveness.

New Legislation on Inherent Distinctiveness

Distinctiveness has always been a prerequisite to registration. However, inherent distinctiveness was not expressly set out in the Act until the major reform of June 17, 2019.

Since the 2019 reform, the Registrar may now object to a mark on the basis that it was not inherently distinctive at the time of application and request evidence to the contrary. Section 32(1)(b) of the Act provides:

32 (1) An applicant shall furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application for its registration, determined without taking into account subsection 34(1), if any of the following apply:

[…]

(b) the Registrar’s preliminary view is that the trademark is not inherently distinctive

The phrase “not inherently distinctive” refers to a trademark having “no inherent distinctiveness” (not registrable) as opposed to a trademark possessing a “low degree of inherent distinctiveness” (registrable).

This process outlined in section 32(1)(b) is new, but the test is the same. All the old jurisprudence is just as relevant today as it was before the change. A court would read section 32(1)(b) harmoniously with the rest of the Act; it does not differ from previous iterations of the requirement for distinctiveness except that the examiner can take the initiative

How to Determine Distinctiveness?

The distinctiveness of a trademark is always considered in the context of the goods and services associated with the trademark and considered from the perspective of the eyes of the public. To use the same example, Apple is a perfectly good trademark in tech, but would not be in the context of a company offering fruits as goods.

In light of the amendments, the Canadian Intellectual Property Office has provided examples of trademarks that are presumed not to be inherently distinctive:[6]

Trademarks that consist primarily of geographic locations;
Trademarks that depict generic designs common to the trade, unless the designs are depicted in a special or creative manner;
Trademarks that are the name of a colour, when in relation to products or goods that are typically or ordinarily that colour;
Trademarks that consist of a single letter or number;
Trademarks in English or French which, pursuant to Section 12(1)(b) of the Act, are clearly descriptive or deceptively misdescriptive;
Trademarks that are primarily the surname of an individual person;
Trademarks that consist of laudatory words or phrases;
Trademarks that provide general information about a good or service; and
Trademarks that are primarily a numerical phone number.

A trademark can be many things; generic, descriptive, suggestive, arbitrary, or fanciful. To determine whether a trademark of any type is distinctive, a prospective applicant should ask themselves:

What is the trademark? The examiner will consider the trademark as a whole, not as individual parts, but the mark may or may not have a dominant feature.[7]
What are the goods or services? The examiner will look at the trademark in the context of the goods or services for which you are attempting to register the trademark. This includes all the goods or services which may be encompassed by the application not just those in respect of which the applicant is using or intends to use.[8] For example, if you are applying for a trademark for a retirement home, you must look at the context of all retirement homes; high end, low end, anywhere in the country, etc.
Who is the public? The examiner will look at the trademark from the perspective of the public for which the goods or services are intended and not the general public.[9] The mark will also be considered from a perspective of its first impression on a casual consumer somewhat in a hurry.[10] This approach largely mirrors the first impression approach to “clearly descriptive” and “deceptively misdescriptive” trademarks caught under Section 12(1)(b) of the Act.[11]

The Burden of Proof

The burden of proof is on the applicant to demonstrate on the evidence that the mark has acquired distinctiveness or has inherent distinctiveness so as to be registrable.[12] The amount of evidence required to meet this burden depends on how obviously distinctive the mark is. If a trademark is not very clearly distinctive, you will have to put in a lot of evidence to show that the trademark is distinctive.

Although section 12 of the Act lists when a trademark would not be registrable, contravention of section 12 is not necessary to find that a trademark lack inherent distinctiveness. A trademark that is believed to be not merely descriptive does not imply that it will therefore be distinctive.^[13] The trademark either is or is not distinctive. This is a binary determination. There is sometimes the misconception that applicants only have to show that their mark is ‘distinctive enough’ to be successful. However, the trademark either is or is not distinctive and it is the applicant’s responsibility to provide enough evidence to show that the mark is distinctive. It is not a matter of how much distinctiveness there is or reaching a certain threshold.

Types of Evidence

Applicants can file factual and opinion evidence.

Factual Evidence – Is the strongest form of evidence available. It is important to say more than just the amount of product sold or the amount of money spent on advertising. The court must be shown that as a result of this extensive use and advertising that the mark has become distinctive in the minds of the public.
Opinion Evidence – Will be considered very cautiously by an examiner, but can be helpful during an examiner’s review.
Expert Evidence – Will only sometimes be helpful. The criteria for receiving expert evidence is outlined in Masterpiece Inc. v. Alavida Lifestyles Inc.[14] To be accepted, the evidence will have to meet the below test:

Is the evidence relevant;
Is the evidence necessary;
Is there any reason the evidence should be excluded; and
Is the expert properly qualified?

- For example, evidence from a professional logo maker on their position on whether a trademark is distinctive is not necessarily useful. The expert is not in a better position to weigh the distinctiveness of a trademark because the test is from the perspective of a person who is likely to use the product. The judge may be more likely to use the product than the expert and certainly will look at the trademark more like the average consumer than a trademark expert.
Survey Evidence – May be valid in some cases, but its reliability and validity are open to question.[15] It is very difficult to qualify survey evidence as reliable as there is no one on the other side saying whether the survey is accurate.

Appealing the Examiner’s Decision

The examiner’s decision as to whether distinctiveness has been demonstrated is final subject to appeal to the Federal Court (section 56 (1) of the Act). This is different from the US and UK systems where you can appeal to other boards within the trademark office. In Canada, to appeal the decision of an examiner of the Registrar, you have to go directly to the courts.

On appeal to the Federal Court, it is possible to submit new evidence if the court determines that evidence is material. This is an unusual and almost unique aspect of the Canadian legal system as new evidence is almost never allowed to come in after the decision is made at the administrative level. However, to be considered material and be allowed to come in at the appeal level, that evidence must fill a gap or be overwhelmingly different from what was seen before.

Additional Resources for Applicants – the Trademark Examination Manual (“TEM”)

The TEM is a reference guide for trademark applicants and agents on how examiners will interpret and apply the legislation. It is meant to provide greater consistency and predictability to applicants submitting applications for trademarks.

The manual is “soft law” which means it falls below the Act and regulations in authority but should still be used by the public so they know what the trademark office’s position is on a matter.

The manual is revised from time to time in consultation with stakeholders. It is created with the intent of being even-handed, well thought out, and taking into consideration any new jurisprudence or legislation.

Registering your Trademark

Registration is critical because it gives the registered owner cross-Canada rights to exclusive use of the mark even if the owner’s business is not yet represented across the country. Owners of registered marks are able to ensure the full protection of their intellectual property afforded to them under law. Common-law marks, on the other hand, allow the trademark owner to stop only those competitors who “pass off” their services or goods for those of the owner in the particular market area where the owner already operates and not elsewhere. This can lead to you losing your rights to your intellectual property and be an impenetrable barrier to rapid growth and expansion of a successful business.

At Sotos LLP, we have acted for hundreds of trademark owners in every aspect of protecting their intellectual property for more than 40 years. We have extensive knowledge of intellectual property issues, and regularly act in the procurement and licensing of trademarks, as well as in defending our clients’ trademarks rights and opposing trademark applications on our clients’ behalf.

Please contact John Yiokaris at 416.977.3998 or jyiokaris@sotos.ca to discuss your intellectual property and trademark issues.

[1] RSC, 1985, c T-13.

[2] Astrazeneca AB v. Novopharm Ltd., 2003 FCA 57 (CanLII).

[3] Tommy Hilfiger Licensing Inc. v. Produits de Qualité I.M.D. Inc., 2005 FC 10 (CanLII) at para 53.

[4] ITV Technologies Inc. v. WIC Television Ltd., 2003 FC 1056 (CanLII), aff'd 2005 FCA 96 (CanLII) at paras 119–21.

[5] Bodum USA Inc. v. Meyer Housewares Canada Inc., 2012 FC 1450 (CanLII) at para 150, aff’d 2013 FCA 240.

[6] Canadian Intellectual Property Office, Trademarks Examination Manual (2019), s 4.9.5.

[7] Battle Pharmaceuticals v. The British Drug Houses Ltd., 1945 CanLII 49 (SCC), [1946] SCR 50 (CanLII); Ultravite Laboratories Ltd. v. Whitehall Laboratories Ltd., 1965 CanLII 43 (SCC), [1965] SCR 734 (CanLII)

[8] Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 (CanLII), [2011] 2 SCR 387 (CanLII) at para 52-53.

[9] MC Imports Inc. v. AFOD Ltd., 2016 FCA 60 (CanLII), [2017] 1 FCR 413 (CanLII) at para 45-52.

[10] Battle Pharmaceuticals v. The British Drug Houses Ltd., 1945 CanLII 49 (SCC), [1946] SCR 50 (CanLII)

[11] See Deputy Attorney-General of Canada v. Jantzen of Canada Ltd. (1964), 46 CPR 66 at 71 (Can. Ex. Ct.).

[12] Molson Breweries v. John Labatt Ltd., 2000 CanLII 17105 (FCA), [2000] 3 FC 145 (CanLII)

[13] Canadian Council of Professional Engineers v. Apa - The Engineered Wood Assn., [2000] FCJ No 1027 (QL), 2000 CanLII 15543 (FC) at para 49.

[14] Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 (CanLII), [2011] 2 SCR 387 (CanLII)

[15] Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 (CanLII), [2011] 2 SCR 387 (CanLII)