Trademark Distinctiveness: The New Examination Criterion That Is Profoundly Changing Trademark Law

The essence of any trademark is to serve as a guarantee for consumers of the origin of the trademarked goods and services. Section 2 of Canada's Trademarks Act (the "Act") states that a "distinctive" mark is a trademark that actually distinguishes - or is adapted to distinguish - the goods or services in association with which it is used from the goods and services of others.

While in many jurisdictions a trademark's distinctiveness has long been taken into account during the examination process, this wasn't the case in Canada until the major reform of June 17, 2019.

As such, new Canadian applications are no longer substantively reviewed solely from a descriptiveness perspective, or to determine whether there is no possibility of confusion with other trademarks, but also from a distinctiveness standpoint.

Under paragraph 32(1b) of the Act, the Registrar now has the power to raise an objection on the basis that a trademark is not inherently distinctive, according to his preliminary opinion. A trademark is inherently distinctive if it does not refer the consumer to a multitude of sources when it is evaluated in light of related products or services.

The Examination Manual provides a partial list of trademarks that are generally considered to lack inherent distinctiveness:

geographical names, even if the place is not known for the said goods or services; generic designs (an ordinary representation of grapes and vine leaves for wine is not adapted to distinguish one trader's wine from that of another); names of colours (RED in association with fire engines, YELLOW in association with tennis balls); one- and two-letter or -number trademarks; laudatory words and phrases such as ULTIMATE, AUTHENTIC, ORIGINAL, QUALITY, VALUE, WONDERFUL, WORLD'S BEST, CANADA'S BEST...; the combination of unregistrable elements under paragraphs 12(1a), 12(1b) of 12(1c) of the Act (for example, BEST CARROTS in association with "carrots") if an objection is raised because the trademark is primarily a surname under paragraph 12(1a) or because the trademark is clearly descriptive or deceptively misdescriptive under paragraph 12(1b); This new standard of review has been applied for many months now and has given rise to many objections based on this new criterion, making it difficult for applicants and their agents. In addition, if the examiner issues an objection based on the descriptive or misleading nature of the trademark or on the fact the trademark is primarily only...