Trademark Protection – Prohibited Marks

Below is an excerpt from John McKeown’s June 2018 Monthly IP Blog.

The adoption and use, and the registration of certain types of marks, is prohibited by the Trademarks Act. Subsection 9(1) of the Act provides that no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, a variety of regal, governmental or public words, crests, symbols, marks or other devices. There are a multitude. Click here for a full list.

Some of the key prohibitions are paragraph 9(1)(d) which provides that no one shall adopt in connection with a business as a trademark or otherwise any mark consisting of, or so nearly resembling as to be likely to be mistaken for any word or symbol likely to lead to the belief that the goods or services with which it is used have received, or are produced, sold or performed under, royal, vice-regal or governmental patronage, approval or authority. For example, it has been found that use of the word “registered” in association with holistic nutritional services was contrary to this prohibition as it suggested governmental approval or authority.

Paragraph 9(1)(j) provides that no one shall adopt in connection with a business as a trademark or otherwise any mark consisting of, or so nearly resembling as to be likely to be mistaken for any scandalous, obscene or immoral word or device. In applying the paragraph the case law has established that critical issue is to determine what the acceptable standards are today and what would be considered immoral, scandalous, or obscene by some people by no means few in number. However, this standard may be susceptible to change as a result of more recent developments. See our previous articles here. 

Paragraph 9(1)(k) provides that no one shall adopt in connection with a business as a trademark or otherwise any mark consisting of, or so nearly resembling as to be likely to be mistaken for any matter that may falsely suggest a connection with any living individual. In order for the prohibition to apply there is an evidentiary burden to provide evidence of a significant public reputation.

Another very important category of prohibited mark consist of “official marks” which is the term used to describe marks adopted and used by a public authority. More to follow on that topic next month.