The trademark law in Canada is in place to provide protection to marks under the trademarks law. A trademark could be anything from a combination of words, sounds or designs, which will allow an individual or a business to distinguish its offerings from other businesses in the market place. Although many things can be classified as trademark, not everything can be classified. A trademark will only qualify for registration if it does not contravene with the Trademarks Act.
There are certain marks that can not be registered as a trademark. These include:
Name and Surnames
One can not register a trademark if there is nothing more than a name or a surname; although exceptions to this rule exist. When a service or goods become distinctive in the market, under the name or surname, which has lead to a public perception of the name acquiring a different meaning. Another exception to this rule is, if the name or surname has a meaning that is also a recognizable word or if it is name of a community, city, town, etc. In these cases, one can go on to register their last name in association with the business.
Clearly descriptive marks
Words that describe features that are inherent to the products or services cannot be registered as a trademark. For instance, words like “sweet” for candy or juicy for fruits, and so on, can not be registered as trademarks. The reason for this rule is very straightforward, if a business were allowed to register such words, no other businesses would be able to promote their goods and services using these words, which is unfair.
Deceptively misdescriptive marks
Marks which are misleading can not be registered as trademarks. For instance, one can not register “Air courier” for a courier service that is using ground based transportation.
Place of origin
It is not allowed to register words that uses a geographical location that is known to be the origin of goods and services. Allowing anyone to use such places will be considered as unfair business practices and will create a monopoly and this would be unfair to other players in the market. A good example of this would be that one can not register Italy for pizza. But on could register the words Arctic for mangoes, as no would not expect mangoes to come from the Arctic. Also, one can not use a word that would mislead the general public about its origin. For instance, if you have a furniture business based in Canada, then you can not use the term Denmark Furniture, as your furniture is not being manufactured in Denmark.
Words in other languages
The trademark law in Canada prohibits words that constitutes the names or services in some other language. For example: “gelato,” Italian for “ice cream”.
Words, design and ideas that are similar to another persons existing trademark or a pending trademark will be rejected.
One can not register a trademark if it resembles certain official marks. The only way to obtain such trademarks is by getting permission from the particular authority in question. These prohibited marks could include the following things:
- Government designs
- Badges or crests of the royal family
- Names or emblems of the Red Cross or the United Nations
- Symbols of provinces, municipalities or public institutions
Also, marks that might be scandalous or immoral are also prohibited.
Trademarks are important for businesses if they want to create a unique identity for themselves in the market. Equally important is to understand what can and what will not constitute a trademark. If you have a mark that you want to register as a trademark or if you want to know more about trademark laws in Canada, then get in touch with Prowse Chowne. Our team of legal experts will be more than happy to help you with your situation.