‘Not inherently distinct’ rulings a headache for trademark applicants

  • June 23, 2020

A recent amendment to the Trademarks Act that lacks clear direction for its implementation has added a substantial burden to applicants in terms of the time and money they need to spend to prove that their trademark is “distinctive.”

The Canadian Bar Association’s Intellectual Property Section says no equivalent to the Registrar’s authority to raise an objection that a trademark is not inherently distinctive existed before the recent amendments.

In a letter to the Canadian Intellectual Property Office, the Section expressed its concern with the fact that CIPO has issued multiple examiners’ reports that a trademark is NID – not inherently distinctive – and thus requires evidence of acquired distinctiveness. It said anecdotal evidence suggests up to a third of substantive objection are made on NID grounds.

“Significant consequences for an applicant include increased costs to respond to reports and to file evidence of acquired distinctiveness, if available,” the Section writes.

“The objection can be an insurmountable barrier to registration of a ‘proposed use’ mark. Further the multitude of reports raising this ground and the required responses adds to application delays and prevents timely processing.”

Because the Trademarks Examination Manual has no clear direction on this question, the Section says, those NID findings have been followed up multiple times by reports asserting that the trademarks in question are not NID.

The Section believes that the manual’s threshold for distinctiveness is set too high, which has led to an “excessive” number of objections. It proposes revising the manual to better reflect the law and to remove language that may be causing the frequent NID objections.

For example, the manual currently states, “Trademarks possess some inherent distinctiveness when nothing about them refers the consumer to a multitude of sources when assessed in relation to the associated goods or services. Where a trademark may refer to many sources, it is considered to have no inherent distinctiveness.”

The Section recommends replacing that language with: “A trademark has some inherent distinctiveness where, considered as a whole, it is capable of communicating to the public that the applicant is the source of the associated goods or services. Even where portions of a trademark may be laudatory or suggestive of associated goods or services, the trademark nevertheless may have some inherent distinctiveness.”

The Section also recommends adding language to the effect that distinctiveness must be determined from the point of view of the ordinary consumer, the general public, and not from the understanding of experts or persons within the industry who have a specialized knowledge of similar products.