Names of Goods or Services
The next limitation on the registrability of a trademark relates to the name of the goods or service in issue.
Subsection 12(1)(c) of the
Trademarks Act
provides that a trademark is not registrable if it is the name in any language of any of the goods or services in association with which it is used or proposed to be used.
All languages are considered. Registration is denied to this type of trademark since these marks cannot distinguish goods or services of one person from the goods or services of others. This type of trademark differs from trademarks which are clearly descriptive of character or quality or origin of the goods or services in issue because they are not eligible for registration, even upon proof of secondary meaning.
For example, an applicant sought to register the trademark RICOTTA FRESCA based upon proposed use of the mark in Canada in association with "cheese; cheese namely ricotta cheese". The application was successfully opposed on the ground that the mark was a straightforward translation of the designation FRESH RICOTTA (or the French equivalent RICOTTA FRAÎCHE) and not registrable.
If only a portion of the trademark is the name of the goods or services and the remaining portion of the mark contains distinctive matter, the Trademarks Office may require an applicant for registration of the trademark to disclaim the right to the exclusive use of the portion of the trademark which is a name.
If a trademark is allowed to become the name of the goods or services through popular use of the mark as a generic term the registration may be attacked because the mark is no longer distinctive. The popularity of the mark becomes its own enemy. For example, the trademark ESCALATOR in association with a vertical
transportation
system consisting of a moving staircase was lost on this basis. The registration is lost for lack of distinctiveness and future applications are then blocked by subsection 12(1)(3).
Canada's New Trademark Regime: The Practical, Tactical Guide to Navigating the Sweeping Changes
I am pleased to advise that I will be a Program Chair at the Osgoode Professional Development Webinar on April 30, 2019, entitled
Canada's New Trademark Regime: The Practical, Tactical Guide to Navigating the Sweeping Changes
. Learn more
here.
I have been working on this event for some time and am looking forward to it. The program is a one-day intensive presentation by industry leaders designed to provide practical advice and strategies to allow lawyers and trademark agents to navigate the new regime and protect their clients' interests.
