Trademark Protection - Essential Requirements  

Distinctiveness

Meaning

 

Distinctiveness is the essence of and cardinal requirement of a trademark. "Distinctive" in relation to a trademark, means 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 is adapted to distinguish them.

The concept of distinctiveness is not static since distinctiveness may be acquired as the mark is used. Acquired distinctiveness is also called secondary meaning. Conversely, a mark which was inherently distinctive or which has acquired distinctiveness can lose its distinctiveness. For example, if a trademark owner communicates an inappropriate message to the public, this may cause a loss of distinctiveness.

Importance

In determining whether two trademarks are confusing, the court or the Registrar must consider, among other things, the inherent distinctiveness of the trademarks in issue and the extent to which they have become known. A mark which is strongly inherently distinctive will only refer the consumer to the goods or services in issue.Typically, such a mark will be a unique coined word. A mark with less inherent distinctiveness will refer the consumer to other sources of goods or services.

Currently the Registrar of Trademarks may not directly refuse an application to register a mark based on lack of distinctiveness but an application maybe opposed on the ground that the applied-for mark is not distinctive.The registration of a trademark may be found to be invalid if the trademark is not distinctive at the time that the proceedings bringing the validity of the registration into question are commenced.

The Test

A trademark is actually distinctive if the evidence demonstrates that it distinguishes the good or service it is registered for use in association with from the goods or services of others in the marketplace.Generally, three conditions must be satisfied to show distinctiveness: (1) the mark and the goods or services are associated or linked; (2) the owner uses the association or link between the mark and its goods or services and is selling the goods or services; and (3) the association or link enables the owner of the mark to distinguish its goods or services from that of others.The message actually given to the public is critical.The name which appears on the address line on product packaging will be important.

The Future

When the outstanding amendments to the Act are brought into force in early 2019 the nature of an examination of an applied-for mark will change. During the examination of a pending application an examiner may consider the distinctiveness of the applied-for trademark and issue an examiner's report refusing an application on the ground that the mark is not distinctive.

In addition, an examiner can require that the applicant file evidence establishing that the trademark is distinctive at the filing date if the examiner's preliminary view is that the trademark is not inherently distinctive. After considering the evidence, the examiner must restrict the registration to the goods or services and to the defined territorial area in Canada in which the trademark is distinctive. 

 

Webinar - Intellectual Property Rights Enforcement: Bigger Challenges and Developments in 2018

I participated in a webinar organized by the Knowledge Group which will took place on February 27. 

The program dealt with the enforcement of intellectual property rights, primarily trademarks, copyrights and patents. The speakers provided an update concerning developments in the US and Canada in the last two years and discussed future challenges.

A limited number of free recordings are still available. If you would like to receive a copy of the recording with my compliments please email me at mckeown@gsnh.com .  

 

If you have any questions or concerns please contact me at mckeown@gsnh.com.

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