As part of the overhaul of Canadian trademark laws, the lack of distinctiveness of a mark was introduced as a possible bar to registration during examination. Since its introduction, the Canadian Trademarks Office (TMO) has raised this new objection with frequency, and it has presented considerable and often surprising challenges on the road to registration for many applicants.
A distinctive trademark is one 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 “is adapted so to distinguish them”. For a trademark application to be registrable, the trademark must have some degree of inherent distinctiveness or must have acquired distinctiveness through its use at the time of filing of the application.
The threshold for the objection to be raised is that the mark has no inherent distinctiveness, and a low degree of inherent distinctiveness should be sufficient. Examiners assess this on a case-by-case basis. Examples of marks that are likely to face non-distinctiveness objections include descriptive or highly suggestive marks, colours, names, laudatory terms, phone numbers, domain names, and marks comprised of one or two letters or numbers. According to the TMO’s practice, all non-traditional marks - for example, three-dimensional marks, sounds, scents, tastes and textures - are assumed to be non-distinctive unless evidence of acquired distinctiveness is provided. It is important to note that non-distinctiveness objections are separate from descriptiveness and name/surname objections, even if the two objections often go together.
There are various strategies available to overcome non-distinctiveness objections, though there is likely to remain a level of uncertainty and unpredictability for some time until the TMO’s practice falls into place. For example, written submissions can be filed to demonstrate that the mark has at least some inherent distinctiveness by, among other things, pointing to a dearth of evidence supporting the examiner’s position, the mark being distinctive in association with the specifically applied-for goods/services, and the State of the Register supporting the mark being inherently distinctive. While an applicant already having the mark registered in Canada may be helpful, it may not be determinative. Likewise, if a particular term has a dual meaning, is a play on words or a portmanteau, or has additional words and/design elements present to demonstrate some degree of distinctiveness, this may help overcome a distinctiveness objection.
If arguments are insufficient to persuade the examiner, evidence of acquired distinctiveness can be filed. The TMO has signalled that the same threshold of evidence as is necessary to overcome descriptiveness and name/surname objections may be required for a distinctiveness objection, and indicated that the degree of evidence required may depend on the degree of non-distinctiveness the mark. In other words, a mark that is a generic term for the goods or services will place a greater burden of proof on an applicant than a suggestive mark for which there is only some evidence of common adoption.
There is some question as to whether the TMO’s approach is consistent with the statute. The Trademarks Act suggests that only a mark with no inherent distinctiveness should be subject to the objection that may require the applicant to furnish evidence that the mark was distinctive at the filing date, while the TMO’s approach suggests marks with some inherent distinctiveness may still be subject to the objection.
The TMO’s flexible approach may be due to the statute allowing it to form a “preliminary view” that the mark is not inherently distinctive, and that the relevant section of the act also addresses evidence required to overcome a descriptiveness and/or name/surname objection. Until the TMO’s practice settles, the applicant may now bear a heavy burden if arguments do not persuade the TMO even if the mark has some inherent distinctiveness. It is important to keep in mind that distinctiveness acquired following the filing date is typically insufficient to overcome such an objection.
Traditionally, demonstrating acquired distinctiveness has necessitated proof of distinctiveness in every province and with each good and service in the application. Of significance, however, are recent suggestions from the TMO that sales and advertising information, which traditionally are relied upon to prove reputation by inference, may not be sufficient. Instead, there have been indications that, while surveys may not be necessary or persuasive, the TMO would like to see evidence to show consumer perception, and that consumers recognise the mark as a trademark. The TMO has signalled that consumer perception could be demonstrated with evidence such as consumer reviews referencing the mark, and possibly brand interactions in social media that demonstrate consumers refer to the mark as a trademark.
It remains to be seen if this will be followed and, if so, it would be a considerable change in the TMO’s practice. Given the direction in which the TMO appears to be heading, brand owners are encouraged to proactively gather evidence of consumer perception for marks that could be seen as non-distinctive, preferably from consumers across Canada, including keeping records of reviews and social media posts that refer to the mark.
This article first appeared on WTR Daily, part of World Trademark Review, in April 2021. For further information, please go to www.worldtrademarkreview.com