Be mindful when selecting a brand. Not all words and names are capable of being protected as trademarks. Section 12(1) of the Trade-Marks Act limits what kinds of trademarks may be registered. So choose registerable trademarks as brands for your business.

• Suggestive (less than clearly descriptive, but still suggest the goods or services —think Facebook®) – protectable
• Arbitrary (think Apple® for computers) – protectable, and subject to a greater scope of protection than suggestive marks
• Fanciful (made up words, think Kodak®) – afforded the greatest scope of protection

The following list identifies the types of trademarks may not be registered:

• The surname of an individual is generally not subject to trademark protection, if there are more than 25 persons in Canada with the surname, for example, Coles or Michaels;
• Clearly Descriptive words in English or French that describe the character or quality of the goods or services in association with which a brand 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;
• The name in any language of any of the goods or services, for example Voda for bottled water; and
• Prohibited trademarks: someone else’ signature or photo, government marks and geographic indications.

The category that your trademark falls into (other than for fanciful trademarks) will depend on the goods or services you sell. For example, “White Shoes” would be generic for shoes, but it would be arbitrary for anything else. 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).

Registrable Trademarks

When is a trademark registrable?

• 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.