A recent decision of the Federal Court has emphasized that in order to be distinctive a trademark does not need to be associated in the minds of the consumers with a particular owner.
Facts
The applicant instituted an application alleging infringement of its registered trademarks. An application proceeds on the basis of affidavit evidence and there is no trial. The respondent denied infringement but brought a cross-application to expunge the applicant’s trademarks on the basis, among others, that the marks in issue were not distinctive of the applicant.
The applicant filed extensive evidence of the sale of its products in association with its two registered trademarks but there was no evidence that the applicant had established any reputation relative to the trademarks. The wares in issue consisted of t-shirts, sweatshirts, tank tops, mugs, fridge magnets, aprons, hats and shopping bags which were primarily sold in the tourist market in Canada. The judge described these wares as “Canadiana” tourist merchandise.
The Expungement Proceeding
In order to show that the trademarks were not distinctive, the respondent had to demonstrate that the trademarks were no longer capable of distinguishing the applicant’s wares from the wares of others in the marketplace. The judge was not convinced that the respondent had produced sufficient evidence to show this.
In addition, she said that the burden was on the respondent to show a lack of distinctiveness. The applicant in the expungement proceeding was not obliged to demonstrate the validity of its trademarks. As a result, the application to expunge the trademarks was dismissed.
Infringement
In the context of determining whether the respondents actions were infringing the applicant had to show that the respondent was using a confusing trademark. One of the factors to be considered is the inherent distinctiveness of the trademarks. The judge observed that case law made it clear that the distinctiveness is the most important attribute of a trademark.
While the distinctiveness of the applicant’s trademarks was on the lower end of the spectrum the applicant’s trademarks did not need to be associated in the mind of a consumer with the particular owner or registrant. The marks must simply be capable of distinguishing the owner’s wares in the marketplace from the wares of competitors. Even a trademark with a low level of distinctiveness has the ability to distinguish wares in the marketplace.
When the judge reviewed all the evidence she found that the respondent was infringing the applicant’s trademarks.
Distinctiveness
This decision is consistent with the definition of “distinctive” contained in the Act and existing case law. A trademark is distinctive if the evidence demonstrates that it distinguishes the product or services that is registered for use in association with, from the products or services of others in the marketplace. 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 a mark to distinguish its product from that of others.
Comment
There are many ways that trademark owners can seek to ensure that their trademarks are distinctive and not enough space to deal with them all in this article. However, one simple thing that can be done is to use a trademark notice on the goods.
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.