As we saw last month the Trademarks Act provides that a trademark is not registrable if it is, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French languages 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.
Character or Quality
The word “character” in this context means a feature, trait, or characteristic of the goods or services in the application. The trademark is not considered by itself but in relation to the goods or services in the application. The word “character” refers to a distinguishing or prominent feature of goods or services.
The reference to “quality” means that laudatory words, which praise or attribute a quality or value to a good or a service, will likely be clearly descriptive although the mark must still be considered in its entirety.
Suggestive Words
A suggestive connotation does not necessarily make a trademark “clearly” descriptive. A mark which contains a covert and skillful allusion to the character or quality of the goods may be permissible. However, a trademark that refers to the character or quality of goods or services in an elliptical way may be held to be clearly descriptive.
Coined or Invented Words
If a word is new to the English or French languages, it may not be clearly descriptive. However, the word must not be a dictionary word and be without a clearly discernible meaning. The mere joining of two descriptive words to form a single word or adding a short, meaningless syllable or other trifling addition will not avoid the prohibition. Similarly, misspelling or changes in the orthography of clearly descriptive words will not make them registrable trademarks. The first impression created by the trademark, whether depicted, written or sounded, must be considered.
Conditions of or the Persons Employed in Production of Goods
The reference to conditions employed in the production of the goods includes a mark like KILNCRAFT for use in association with tableware since the first impression of an ordinary consumer in Canada on seeing the mark would be that the goods were produced by a kiln process.
There are few cases dealing with the reference to “persons employed”. However, it has been found that the word “engineer” is not registrable for use in association with engineering related services as it would be assumed that the services would be performed by a professional with that designation.
Place of Origin
A trademark which is clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services it is sought to be registered in association with, is not registrable.
To determine whether a geographic name is unregistrable as a trademark, because it is clearly descriptive of place of origin, two questions must be considered. First, it must be determined whether the trademark is a geographical name; and second, the place of origin of the goods must be ascertained. If the geographic place name or location has other meanings the perception of the ordinary consumer may be relevant.
The Trademark Office has recently amended its practice direction relating to place of origin and this provision has been widely raised as a bar to registration.
Disclaimer
A disclaimer of part of a trademark may overcome an objection based on descriptiveness. For example, a mark may be registrable as a whole although it includes a word which is clearly descriptive which is disclaimed. However, a disclaimer may not be used in relation to a deceptively misdescriptive trademark to make the trademark registrable when the unregistrable matter is the dominant feature of the trademark.
If you have any questions please contact me at mckeown@gsnh.com.