Many business owners are unaware of the constraints relating to the types of trademarks that can be registered.
The right to registration is not inherent in a trademark and depends upon compliance with the Trademarks Act. The Act sets out characteristics which may preclude obtaining a registration.
A brand owner must be aware of these restrictions since in some cases registration will not be possible. In addition, if there are issues relating to compliance this can add materially to the cost of prosecuting a trademark application.
A trademark is not registrable if it is:
(a) A Name or Surname - a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;
(b) Clearly Descriptive or Deceptively Misdescriptive - 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;
(c) The Name of the Goods or Services - the name in any language of any of the goods or services in connection with which it is used or proposed to be used;
(d) Confusing - confusing with a registered trademark;
(e) A Prohibited Mark - a mark of which the adoption is prohibited on the basis it consists of or resembles a prohibited or official mark as well as hallmarks and other well-known marks indicative of quality or origin;
(f) A Plant Breeders' Denomination - a denomination under the Plant Breeders' Rights Act the adoption of which is prohibited;
(g) A Geographical Indication for Wine - in whole or in part a protected geographical indication, where the trademark is to be registered in association with a wine not originating in a territory indicated by the geographical indication; or
(h) A Geographical Indication for Spirits - in whole or in part a protected geographical indication, where the trademark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication;
(i) A Geographical Indication for an Agricultural Product or Food - in whole or in part a protected geographical indication, and the trademark is to be registered in association with an agricultural product or food - belonging to the same category as the agricultural product or food identified by the protected geographical indication - not originating in a territory indicated by the geographical indication;
(j) An Olympic or Paralympic Mark - a specified Olympic or Paralympic mark the adoption of which is prohibited by Olympic and Paralympic Marks Act.
A trademark that is not registrable by reason of paragraph (a) or (b) is registrable if it has been so used in Canada by the applicant or its predecessor in title as to have become distinctive at the date of filing an application for its registration. This is referred to as acquired distinctiveness or secondary meaning but to take advantage of the exception the applicant must file proof of acquired distinctiveness which can be difficult and expensive. There are no other statutory exceptions.
If a mark is not registrable it will be difficult, if not impossible, to protect and may not be a good choice.
