Below is an excerpt from John McKeown’s April 2018 Monthly IP Blog.
Distinctiveness – Part II
Last month we discussed the basic elements relating to distinctiveness. This month we discuss additional elements.
Distinctiveness is Not Static
The distinctiveness of a trademark may change. An initially non-distinctive mark may acquire distinctiveness and a registration may be obtained. For example, a mark is not registrable if it is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years, or clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which it is used. However, a trademark which is not registrable because it falls into one of these categories may be registrable if it has been used in Canada by the applicant or its predecessor in title so as to have become distinctive at the date of filing of an application for registration.
On the other hand, a mark which is distinctive or which has acquired distinctiveness, may lose its distinctiveness. Such a loss may occur because of misuse or mismanagement by the trademark owner. Communicating an inappropriate message to the public may cause a loss of distinctiveness. Failing to restrain the infringing activities of the third parties or using the mark in a generic fashion may also result in a loss of distinctiveness.
Trademark Applications for Marks Registered and Used Abroad
A non-Canadian trademark owner may file an application for a trademark and obtain a registration in Canada based on a trademark duly registered in the applicant’s country of origin, if among other things, the mark applied for is not without distinctive character, having regard to all of the circumstances including the length of time during which it has been used in any country. However, the courts have found that the onus of proving that a trademark is not without distinctive character is a heavy one to discharge. To satisfy the onus, evidence that the mark has become known in Canada so as to distinguish the applicant’s wares is required.
The outstanding amendments to the Act will change the above rules. First, the reference to “country of origin” will be removed from the Act and an application and claim to priority can be based on the filing of an application in any country of the Paris Convention other than Canada and is no longer restricted to the applicant’s “home country”. Second, the concept of “not without distinctive character´ will be removed from the Act and an application based on registration and use abroad must satisfy all the requirements that apply to domestic application.
Webinar – The Hague Agreement and Design Filings: Recent Trends and Developments in 2018
I participated in a webinar organized by the knowledge Group which took place on March 20.
The program dealt with The Hague Agreement which is an international registration system that allows patent and industrial design owners to obtain protection for up to 100 industrial designs in designated member countries and intergovernmental organizations, which are known as “Contracting Parties.” Single international applications in a single language are filed either through the office of applicant’s contracting party or with the International Bureau of the World Intellectual Property Organization (WIPO). This convention is conceptually similar to the Madrid convention for trademarks.
The program provides a great overview of how and when to obtain protection and the steps Canada has taken to join the Convention.
A few free recordings are still available. If you would like to receive a copy of the recording with my compliments please email mckeown@gsnh.com.
If you have questions, please contact mckeown@gsnh.com.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer