Sep 2019 Charity & NFP Law Update
As was recently reported in the June 2019 Charity & NFP Law Update and August 2019 Charity & NFP Law Update, significant amendments to the Trademarks Act came into force on June 17, 2019. One significant change is that applications will be examined for inherent distinctiveness.
“Distinctiveness” is defined in section 2 of the Act as “a 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.” Trademarks can be either inherently distinctive or acquire distinctiveness through long-standing use. The inherent distinctiveness of a mark can fall within a range from no inherent distinctiveness to high inherent distinctiveness and directly impacts the scope of protection afforded to the trademark. If nothing about a trademark refers the consumer to a multitude of sources when assessed in relation to the associated goods or services, then the trademark is said to have some inherent distinctiveness. On the other hand, where a trademark may refer to many sources, it is considered to have no inherent distinctiveness. As mentioned above, if a trademark does not have inherent distinctiveness, it may still acquire distinctiveness through continuous, long-standing use. To establish this acquired distinctiveness, it must be shown that the public associates that trademark as originating from one particular source.
The Canadian Intellectual Property Office’s Trademarks Examination Manual provides a non-exhaustive list of examples of trademarks that would, generally speaking, be considered to have no inherent distinctiveness. Amongst other things, these include trademarks which are primarily geographic locations, consist of a generic design common in the trade, are names of colours in association with goods that would typically be that colour, are one or two letter marks or number marks commonly used in a specific field, consist of words or phrases that are clearly descriptive of the associated goods or services in both English and French, or are laudatory words and phrases.
If “the Registrar’s preliminary view is that the trademark is not inherently distinctive,” and the objection is not overcome by way of legal argument, the applicant may be required to submit evidence that the trademark is distinctive throughout Canada in association with the applied for goods and services. If sufficient evidence is filed and the Registrar determines that the trademark is distinctive, the registration that accrues from the application may be restricted to the goods or services with which the mark has been shown to be distinctive, and to the geographic areas in Canada where the trademark has acquired distinctiveness. If the examiner is not convinced on the evidence that the trademark is distinctive, the application may be refused.
Given that this change will make it more difficult to register non-distinctive trademarks, it is important for charities and not-for-profits to work closely with their trademark counsel when filing an application to consider appropriate filing strategies that take into account the new distinctiveness requirement at examination. Careful consideration at an early stage will avoid objections, as well as unnecessary delays and costs that may be incurred from having to prepare evidence of distinctiveness later on. It is also important to note that the distinctiveness of a trademark can be lost through improper assignments or licensing, or if the mark is allowed to become generic or a commonly used term in association with the goods or services. As a result, charities and not-for-profits should be careful to ensure that trademarks maintain their distinctiveness so that trademark rights are not lost.