A Guide to Trade-marks: Making sure your Trade-mark can be Registered

• Names and surnames
• Clearly descriptive
• Deceptively misdescriptive
• Place of origin
• Disclaimers
• Words in other languages
• Causing confusion
• Prohibited marks
• Further prohibitions
• Summary: What trade-marks can you register?

Your trade-mark will qualify for registration as long as it does not conflict with Canada's Trade-marks Act, which sets out the requirements for registration. Sections 9 through 12 of the Act deal with the kinds of marks you may not register. Become familiar with these restrictions, summarized on the next page. It will help ensure a successful application.

Names and surnames

A trade-mark will not be registered if the trade-mark is primarily your full name or surname, or that of another individual (e.g. John Doe or Jane Smith, Wong, Cohen, etc.). An exception to this rule is if you can prove that your wares or services have become known under the name "Smith" or "Wong" or "Cohen," so that the word now connotes more than a person's name or surname in the public's mind. There are numerous examples of personal names that have become associated with a food, drink, or other product and are now registered trade-marks.

Another exception is if the name or surname has meaning other than just as a name or surname, i.e., it is also a recognizable word. Suppose your last name were, in fact, "Brown." You could register the word for your ice cream business as long as there were no other reasons to disqualify it.

Clearly descriptive

You may not register a word that clearly describes a feature of the wares or services. For example, "sweet" for ice cream, "juicy" for apples, and "perfectly clean" for dry cleaner services could not become registered trade-marks. All good apples could be described as "juicy" and all ice cream as "sweet"; these are inherent characteristics of the wares. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods, which would be unfair. Again, if you can establish that "Sweet Ice Cream" has become so well known that people think of your product (and no one else's) when they hear the words, you might be able to register the trade-mark.

Deceptively misdescriptive

A further restriction is if the mark is not clearly descriptive, but clearly misleading, or in the words of the Act, "deceptively misdescriptive." For example, you could not register "sugar sweet" for candy sweetened with artificial sweetener, and "air express" for a courier service that uses ground transportation.

Place of origin

You may not register a word that clearly designates the place of origin of the wares or services, or that misleads the public into thinking that the wares come from a certain place if they do not. Thus, Paris Fashions, Atlantic Cod, Toronto Courier Service, B.C. Wines, or Danish Furniture could not be registered for those particular wares and services. Allowing you to use place names as part of your trade-mark would be to give you a monopoly on a geographical term and be unfair to others. However, you conceivably could register the words "North Pole" for bananas, since no one would expect bananas to come from there.

Disclaimers

A disclaimer is a statement indicating that the applicant does not claim exclusive rights for a certain word or words appearing in the trade-mark.

In this way, you can use clearly descriptive words in your trade-mark which are unregistrable on their own (as described above), with the understanding that you have no rights over them.

For example, the trade-mark Northpole Ice Cream (used as a trade-mark for the operation of an ice cream parlour) would require a disclaimer of the words "ICE CREAM" as these are words that are clearly descriptive of the character of the services and should therefore remain available for all to use within this field.

A disclaimer statement is entered on the application (usually the third paragraph) and in the case of the above example would read as follows: "The applicant disclaims the right to the exclusive use of the words ICE CREAM apart from the trade-mark as a whole."

Therefore, these words are still part of the trade-mark, but the applicant is not claiming exclusive rights for these specific words.

Words in other languages

Words that constitute the name of the wares or services in another language–such as "gelato," Italian for ice cream; "anorak," Inuktitut for parka; or "Wurst," German for sausage– cannot be registered.

Causing confusion

Beware of words, symbols, sounds and ideas that suggest someone else's trade-mark. If it is confusingly similar to a registered trade-mark or a pending mark, it will be refused. This prohibition makes sense when you recall that the whole point of registering a trade-mark is to protect your corporate identity from imitation or confusion with others. Trade-mark examiners take into account various factors when determining whether trade-marks are confusing. For example, they determine:

1. whether the trade-marks look or sound alike and whether they suggest similar ideas; and
2. whether they are used to market similar wares or services.

Let's go back to the example of "Northpole" Ice Cream. Suppose another company was manufacturing and selling frozen water products under the registered trade-mark "Southpole." People might easily conclude that "Northpole" and "Southpole" products are manufactured and sold by the same company. They might expect the trade-marks to be owned by the same entity. Hence your application to register "Northpole" might be turned down on the grounds of causing confusion with the registered mark "Southpole" owned by another company.

Other hypothetical examples of confusing trade-marks would be: "King Dog Food" vs. "King Cat Food" (two companies, two different product lines, but the same trade-mark and the same general area–pet food); and "Glitter" mineral water vs. "Glittering" ginger ale. However, "Glitter" for mineral water could probably co-exist as a registered trade-mark with "Glittering Dry Cleaners" as a registered trade-mark for dry cleaning services, because the wares and services in this example are quite different.

Prohibited marks

Subsection 9(1) of the Trade-marks Act lists various kinds of marks that are expressly prohibited. You may not register a trade-mark that resembles certain official symbols unless you have the consent of the authority in question. These official symbols include:

• official government symbols, e.g., the Canadian flag;
• coats of arms of the Royal Family;
• badges and crests of the Armed Forces and the letters R.C.M.P.;
• emblems and names of the Red Cross, the Red Crescent, the United Nations;
• armorial bearings, flags and symbols of other countries; and
• symbols of provinces, municipalities and public institutions.

These prohibitions are designed to prevent people from "cashing in" on the prestige and authority of the above-mentioned institutions and misleading the public.

Subsection 9(1) of the Trade-marks Act also prohibits subject matter that is obscene, scandalous or immoral. For example, your trade-mark may not include profane language, obscene visuals or racial slurs.

Another prohibition covers the use of portraits or signatures of living persons or persons who have died within the preceding 30 years. For example, using the photo of an existing rock group to promote your record store would be prohibited unless you had formal consent to do so.

Further prohibitions

A trade-mark will not be registered if it consists of a plant variety denomination or is a mark so nearly resembling a plant variety denomination as to be likely to be mistaken therefor, and the application covers the plant variety or another plant variety of the same species.

A trade-mark will not be registered if it is, in whole or in part, a protected geographical indication for wines or spirits, and the application covers a wine or spirit not originating in the territory indicated by the geographical indication.

Summary: What trade-marks can you register?

No: "Sweet" Ice Cream "Devonshire" Ice Cream (unless, in the above cases, you can prove that the trade-mark is distinctive of the applicant) "Northpole" Ice Cream (if "Southpole" is a registered trade-mark for frozen water products) "R.C.M.P.'s Favorite" Ice Cream

Yes: "Northpole" Ice Cream (if it is not confusing with a registered or entitled pending trade-mark, i.e. one with an earlier date of use or filing) "Venus" Ice Cream (mythical, not actual name) "Scrumptillus" Ice Cream (invented, not real adjective) "True Blue" Ice Cream (words not normally associated with ice cream)

Note: In all the above cases, there would be a disclaimer covering the words "ice cream."

A Guide to Trade-marks
| Table of Contents | Introduction | Making sure your Trade-mark can be Registered | The Trade-mark Registration Process | Other Procedures | For More Information | Fees | Appendix A - Twenty Common Questions About Trade-marks | Appendix B - Format of the Application | Appendix C - Your Trade-mark Application | Glossary |