Select a Brand Name that is Registrable

Select a Brand Name that is Registrable

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It is important to select a brand name that you can register as a trademark in Canada. Most products and services need a distinctive brand name to build goodwill and enhance their reputation.

If you spend money building a brand using a mark that you can’t register, anyone can compete with you using the same brand or a similar brand.

Choose a Distinctive Name for Your Brand

Don’t choose a name that feels comfortable because it’s similar to a competitor or a well-known brand. Choosing a trendy name just makes it harder for someone to remember exactly what your brand stands for and even what is your brand. Imagine you tell someone that your brand is , that . A name that’s pretty much the same as everyone else’s – or a subtle re-working of a familiar type of name – is never going to be an effective brand name.

If you apply to register a trademark that is not registrable, you will likely get a letter from a CIPO examiner telling you that the trademark application is rejected based on some provision of the Trademarks Act. If you can’t overcome the examiner’s rejection, then your application will go abandoned and you will not get a refund. There are no refunds for trademark applications.

If you get lucky with an examiner, who thinks that it is a close call and allows your trademark to get registered, an interested person can petition the Federal Court of Canada to cancel your trademark registration for an unregistrable trademark.

When a trademark registration is invalid under the Canadian Trademarks Act:

18. (1) The registration of a trade-mark is invalid if

(a) the trade-mark was not registrable at the date of registration;

(b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;

http://laws-lois.justice.gc.ca/eng/acts/T-13/FullText.html

It is important consider that not all words and names are capable of being protected as trademarks, when selecting a brand.

The following list identifies the types of trademarks and the levels of protection they can obtain:

Protection: Very Weak to Very Strong

  • Surnames can not registered as a trademark under section 12(1)(a)
  • Clearly Descriptive words are not subject to trademark protection under section 12(1)(b)
  • Descriptive words (describes the goods/services as opposed to merely stating what they are) are protectable as a trademark only after becoming distinctive at the date of filing an application for its registration. Descriptive words describe, in the English or French,  the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin.
  • Suggestive words are protectable marks, but have a moderate scope of protection, because they still identify the character or quality of the goods or services (i.e. Jiffy Lube).
  • Arbitrary words (Apple® iPhones) protectable, and subject to a greater scope of protection than suggestive words; and
  • Coined words are very strong marks. Coined words are fanciful, made up words, think Exxon® and are afforded the greatest scope of protection

Importantly, which category your trademark falls into (other than for fanciful trademarks) will depend on the goods or services you sell. For example, “High Top Shoes” would be generic for sneakers, but would be arbitrary for pretty much anything else. Additionally, keep in mind that the more similar your trademark is to other trademarks on the market (think of “Grand” for hotels), the less identifying strength it is going to have (assuming it’s even available for adoption in the first place).

Excerpts from the Canadian Trademarks Act*:

“trade-mark” means

(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,

(b) a certification mark,

(c) a distinguishing guise, or

(d) a proposed trade-mark;

12. (1) Subject to section 13, a trade-mark is registrable if it is not

(a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;

(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;

(c) the name in any language of any of the goods or services in connection with which it is used or proposed to be used;

(d) confusing with a registered trade-mark;

(e) a mark of which the adoption is prohibited by section 9 or 10;

(f) a denomination the adoption of which is prohibited by section 10.1;

(g) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a wine not originating in a territory indicated by the geographical indication;

(h) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication; and

(i) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and Paralympic Marks Act, a mark the adoption of which is prohibited by subsection 3(1) of that Act.

Idem

(2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.

R.S., 1985, c. T-13, s. 12; 1990, c. 20, s. 81; 1993, c. 15, s. 59(F); 1994, c. 47, s. 193; 2007, c. 25, s. 14; 2014, c. 32, ss. 15(F), 53.
Previous Version
When distinguishing guises registrable

13. (1) A distinguishing guise is registrable only if

(a) it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration; and

(b) the exclusive use by the applicant of the distinguishing guise in association with the goods or services with which it has been used is not likely unreasonably to limit the development of any art or industry.

Effect of registration

(2) No registration of a distinguishing guise interferes with the use of any utilitarian feature embodied in the distinguishing guise.

Not to limit art or industry

(3) The registration of a distinguishing guise may be expunged by the Federal Court on the application of any interested person if the Court decides that the registration has become likely unreasonably to limit the development of any art or industry.

R.S., 1985, c. T-13, s. 13; 2014, c. 32, s. 53.
Previous Version
Registration of marks registered abroad

14. (1) Notwithstanding section 12, a trade-mark that the applicant or the applicant’s predecessor in title has caused to be duly registered in or for the country of origin of the applicant is registrable if, in Canada,

(a) it is not confusing with a registered trade-mark;

(b) it is not without distinctive character, having regard to all the circumstances of the case including the length of time during which it has been used in any country;

(c) it is not contrary to morality or public order or of such a nature as to deceive the public; or

(d) it is not a trade-mark of which the adoption is prohibited by section 9 or 10.

Trade-marks regarded as registered abroad

(2) A trade-mark that differs from the trade-mark registered in the country of origin only by elements that do not alter its distinctive character or affect its identity in the form under which it is registered in the country of origin shall be regarded for the purpose of subsection (1) as the trade-mark so registered.

R.S., 1985, c. T-13, s. 14; 1994, c. 47, s. 194.
Registration of confusing marks

15. (1) Notwithstanding section 12 or 14, confusing trade-marks are registrable if the applicant is the owner of all such trade-marks, which shall be known as associated trade-marks.

Record

(2) On the registration of any trade-mark associated with any other registered trade-mark, a note of the registration of each trade-mark shall be made on the record of registration of the other trade-mark.

Amendment

(3) No amendment of the register recording any change in the ownership or in the name or address of the owner of any one of a group of associated trade-marks shall be made unless the Registrar is satisfied that the same change has occurred with respect to all the trade-marks in the group, and corresponding entries are made contemporaneously with respect to all those trade-marks.

R.S., c. T-10, s. 15.
PERSONS ENTITLED TO REGISTRATION OF TRADE-MARKS

Registration of marks used or made known in Canada

16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with goods or services is entitled, subject to section 38, to secure its registration in respect of those goods or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with

(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

(c) a trade-name that had been previously used in Canada by any other person.

Marks registered and used abroad

(2) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that the applicant or the applicant’s predecessor in title has duly registered in or for the country of origin of the applicant and has used in association with goods or services is entitled, subject to section 38, to secure its registration in respect of the goods or services in association with which it is registered in that country and has been used, unless at the date of filing of the application in accordance with section 30 it was confusing with

(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

(c) a trade-name that had been previously used in Canada by any other person.

Proposed marks

(3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the goods or services specified in the application, unless at the date of filing of the application it was confusing with

(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

(c) a trade-name that had been previously used in Canada by any other person.

Where application for confusing mark pending

(4) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous filing of an application for registration of a confusing trade-mark by another person, unless the application for registration of the confusing trade-mark was pending at the date of advertisement of the applicant’s application in accordance with section 37.

Previous use or making known

(5) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous use or making known of a confusing trade-mark or trade-name by another person, if the confusing trade-mark or trade-name was abandoned at the date of advertisement of the applicant’s application in accordance with section 37.

R.S., 1985, c. T-13, s. 16; 1994, c. 47, s. 195; 2014, c. 32, s. 53.
Previous Version
VALIDITY AND EFFECT OF REGISTRATION

Effect of registration in relation to previous use, etc.

17. (1) No application for registration of a trade-mark that has been advertised in accordance with section 37 shall be refused and no registration of a trade-mark shall be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trade-mark or trade-name by a person other than the applicant for that registration or his predecessor in title, except at the instance of that other person or his successor in title, and the burden lies on that other person or his successor to establish that he had not abandoned the confusing trade-mark or trade-name at the date of advertisement of the applicant’s application.

When registration incontestable

(2) In proceedings commenced after the expiration of five years from the date of registration of a trade-mark or from July 1, 1954, whichever is the later, no registration shall be expunged or amended or held invalid on the ground of the previous use or making known referred to in subsection (1), unless it is established that the person who adopted the registered trade-mark in Canada did so with knowledge of that previous use or making known.

R.S., 1985, c. T-13, s. 17; 2014, c. 32, s. 56(F).
Previous Version
When registration invalid

18. (1) The registration of a trade-mark is invalid if

(a) the trade-mark was not registrable at the date of registration;

(b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;

(c) the trade-mark has been abandoned; or

(d) subject to section 17, the applicant for registration was not the person entitled to secure the registration.

Exception

(2) No registration of a trade-mark that had been so used in Canada by the registrant or his predecessor in title as to have become distinctive at the date of registration shall be held invalid merely on the ground that evidence of the distinctiveness was not submitted to the competent authority or tribunal before the grant of the registration.

R.S., 1985, c. T-13, s. 18; 2014, c. 32, s. 19.

  • Note: The Canadian Trademarks Act is undergoing a number of changes between 2014 and 2017. Please refer to the official current up to date version of the Trademarks Act before making any decisions or spending any money.
  • Please consult with a trademark agent or a trademark lawyer before making any decisions about selecting a brand

http://laws-lois.justice.gc.ca/eng/acts/T-13/FullText.html

David Michaels

David Michaels, J.D., B.Eng., CHRM is a legal blogger (and a trained attorney) who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993.

David is a brand consultant, a writer, an eCommerce entrepreneur, and an aeronautical engineer.
http://ca.linkedin.com/in/davidtmichaels/

Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author’s notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.

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