The Concept
Distinctiveness is the essence and cardinal requirement of a trademark. The Trademarks Act provides that “distinctive in relation to a trademark, describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them”.
A trademark is actually distinctive if the evidence shows that it distinguishes the goods or services it is registered for use in association with from the goods or services of others in the marketplace. A mark need not be associated with a particular owner if it can distinguish the goods or services of the owner from the goods or services others.
Generally, three conditions must be satisfied to show distinctiveness: (1) the mark and a product are associated or linked; (2) the owner uses the association or link between the mark and its product and is selling the product; and (3) the association or link enables the owner of the mark to distinguish its product from that of others.
The message actually given to the public is critical. The name which appears on the address line on product packaging will be important.
Colour can be an important aspect of the trademark and help to make it distinctive. However, a colour by itself is not distinctive and there must be some additional independent feature to obtain a registration.
Using a trademark notice can assist in maintaining distinctiveness. A trademark owner should use the notification ™ to identify an unregistered trademark and the symbol ® to identify a registered trademark. A trademark owner may also use a trademark legend with these symbols such as “® a registered trademark of XYZ Company.”
The concept of distinctiveness is not static since distinctiveness may be acquired as the mark is used. Acquired distinctiveness is also called secondary meaning. Conversely, a mark that is inherently distinctive, or which has acquired distinctiveness can lose its distinctiveness. For example, if a trademark owner communicates an inappropriate message to the public, this may cause a loss of distinctiveness.
The Impact
Distinctiveness has increased importance under the amended Act. During the examination of a pending application, an examiner may consider the distinctiveness of the applied-for trademark and issue an examiner’s report refusing an application because the applied-for mark is not distinctive. In addition, an examiner can require that the applicant file evidence establishing that the trademark is distinctive at the filing date if the examiner’s preliminary view is that the trademark is not inherently distinctive.
The examiner must, after considering the evidence adduced, restrict the registration to the goods or services in association with which, and to the defined territorial area in Canada in which, the trademark is shown to be distinctive.
An advertised application may be opposed because the trademark applied for is not distinctive.
The registration of a trademark may be found to be invalid if the trademark is not distinctive when the proceedings bringing the validity of the registration into question are commenced.
If you have questions, please contact me at mckeown@gsnh.com.
Trademark Infringement Remedies: Trends and Updates
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