Choosing a Strong and Enforceable Trademark

A trademark exists to distinguish the wares or services of one person from the wares or services of another person. To perform this function, the mark must both be visually distinctive of a particular source, character or quality and operate within the confines of the Trade-marks Act. Effective marks must not be descriptive, misdescriptive, generic, the name of a person, or a mark used by another company or individual. Two of the main trademark pitfalls, genericism and descriptiveness, are discussed below. 

Genericism 

Genericism results when a trademark actually becomes the product name or falls into the public domain of use. For example ‘Kleenex,’ originated as the trademark of a specific brand of tissue but has now become descriptive of tissues in general such that it can no longer be monopolized or protected. 

Any mark that, in ordinary good-faith commercial usage, has become recognized in Canada as designating the kind, quality, quantity, value, place of origin, or date of production of any product or service is unregistrable for wares or services of the same general class. Generic marks cannot be protected because they have lost the requisite trademark element of distinctiveness. 

For example, Nabisco eventually lost the rights to the word mark “Shredded Wheat.” The company may have maintained these rights if they had marketed the product as “Shredded Wheat Biscuits.” By separating the product and the trademark, Nabisco perhaps could have influenced the public to associate the mark with the company and not the product. 

Descriptiveness 

A trademark must not be either clearly descriptive or deceptively misdescriptive of the (i) character or quality (ii) origin of the wares or services or (iii) the conditions or persons involved in the manufacture or performance of the wares and services.¹  A mark will fail this test if it qualifies as the above in either official Canadian language in the phonetic or written form. The court will consider whether the general public of Canada would be influenced, on first impression, by the descriptive or misdescriptive nature of the mark. 

A product is clearly described only if the mark is ‘material’ or ‘intrinsic’ to the character or quality of the mark. The rationale behind this ban is to maintain access to marks that may be necessary to accurately describe the product, service or ware. 

Secondly, a description including the origin of the wares and services is a prohibition to mark registration. Again, the rationale is that other traders should not be denied from indicating the source or origin of their product, service or ware. Note that certification marks or geographical indications, typically held by the government or a producer’s association, are not contemplated in the above discussion. Words that have an alternate meaning (from the geographic indication) require a further assessment. The courts must then determine whether a significant number of ordinary users would appreciate or believe that the product name was associated with a geographical place. 

Thirdly, marks that denote the conditions or persons involved in the manufacture or performance of the wares or services are not registrable. 

At the other extreme, marks that are deceptively misdescriptive are also unregistrable. Obviously, it is contrary to consumer welfare to allow marks that may potentially mislead or deceive, although registrations including the terms ‘perfection’ and ‘premier’ have been allowed. 

There is a middle ground between the extremes of allowable non-descriptive and disallowed clearly descriptive or deceptively misdescriptive: suggestive marks are permissible. These marks are considered only ‘suggestive of the character or quality of the wares or services with which it is associated.’ 

It is difficult to find a consistent pattern or rule that is used to evaluate descriptiveness. The Registrar has allowed the following marks: “Kold One” for beer, “Kidfitters” for children’s clothing and “Waterwool” for waterproof wool clothing. The Registrar has disallowed registration of the following marks: “Once-a-Week” for floor cleaner, “Hydropump” for swimming pool filters and “Shammie” for cleaning gloves without chamois. These unpredictable results must mean that the Examiner evaluates each situation on a case-by-case basis and in a fact-sensitive manner. 

Disclaimers 

Words or marks that are descriptive or generic are prima facie unregistrable but can be ‘saved’ by disclaiming exclusive rights to use the word or words. Even though part of the mark has been disclaimed, the entire mark is considered when evaluating distinctiveness, confusion and infringement. If the resulting mark is not distinctive then it cannot be registrable as distinctiveness is a trademark prerequisite. The power of disclaimers cannot be used for deceptively misdescriptive, official or offensive marks. 

The effect of a disclaimer is to deny the registrant any rights to the disclaimed word or words. This contradicts the protection purposes of registration and yet a disclaimer may be necessary in order to effect registration at all. Over time, the disclaimed portions of the mark may become distinctive and integral to the mark. If this occurs the registrant may apply to again register the mark without an accompanying disclaimer. Thus, disclaimers are not necessarily an absolute state. 

Conclusion 

In order to establish a strong brand it is preferable to choose a trademark which is either distinctive or in any case prima facie enforceable should the need arise. Steps which can be taken to choose a strong mark are to search in advance of adopting a trademark in order to ascertain whether or not anyone else is using a similar trademark which could present an impediment
to registration or enforcement of your trademark – this is often referred to as ‘clearing’ a trademark. Various degrees of searching can be performed to provide different levels of comfort as to the registrability or validity of the trademark chosen. 

An issue that is often overlooked in trademark clearance is foreign markets. It is important to remember that even though you may have a clear route to registration in Canada, for example, with a chosen trademark, it is often the case that in other countries there might be a problematic previous use of another trademark. As such clearance procedures are often undertaken in
all countries of economic interest in advance of embarking on the adoption of a mark in one country where it may then later be found that the branding of the product needs to be changed in other geographic markets, at considerable expense or extended time to market. Where foreign markets are concerned it is also important to remember language translations of a trademark that you choose to adopt may not always be flattering to your product or service, or may in fact be offensive to local culture. This is another issue for consideration in the choice of a trademark for use in multiple markets. 

Once a mark has been adopted it is necessary to protect the trademark rights that have been created. Ongoing monitoring of the market is necessary to ensure that any confusing or infringing uses of other trademarks, or in some cases unauthorized use of your own mark, are caught as quickly as possible. Education of your distributors or customers is also necessary to assist in the avoidance of the rendering of your trademark generic by descriptive use. A strong trademark is a valuable asset on which others may try to trade, and in the case of descriptiveness a strong trademark is the best mark to easily become generically associated with the products or services with which it is used – consider the elevator, kerosene, even the Xerox machine – ongoing protection of your trademark is necessary to preserve or even further enhance its value. 

By choosing a distinctive trademark and taking the proper ongoing steps to enforce and protect the rights in that trademark, a trademark owner can maximize the value of their brand and increase or maintain its longevity.

¹ Trade-marks Act, RSC 1985, c. T-13, s. 12(1)(b).

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