Trade-Marks Examination Manual (page 47 of 55)
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IV.10.3 Determination of Distinctiveness — Subsection 12(2)
The evidence filed by the applicant must be sufficient to enable the examiners to conclude that the public in Canada, or in a territory or province, perceives the descriptive word or surname (as used by the applicant in association with the wares or services applied for), as a word which distinguishes the wares or services of the applicant from those of others. The primary descriptive connotation or surname significance will have been subordinated in t he mind of the public in relation to the particular wares or services applied for, and its secondary meaning will dominate.
A word having a primarily descriptive or surname significance cannot reasonably be expected to have acquired a secondary meaning as a trade-mark to every last individual in the territory. The proof of distinctiveness pursuant to subsection 12(2) requires only that there be a substantial recognition of the secondary meaning of the mark by dealers and/or the public. See also sections IV.10.2.3 and IV.10.2.4 of this manual.
Nevertheless, the evidence of acquired distinctiveness or secondary meaning must be strong and convincing. As Fox stated in Canadian Law of Trade Marks and Unfair Competition, 3rd edition at p. 131:
There will, of course, always be considerable difficulty in convincing the Registrar, or the court, that a prima facie unregistrable word has acquired a secondary meaning sufficient to permit its registration, for the legislature and the courts have always shown a natural disinclination to allow any person to obtain by registration a monopoly in what others may legitimately desire to use.
IV.10.3.1 Prior Decision
The examiners must read with caution the decisions under the Unfair Competition Act, as the words "adapted to distinguish," which appeared in paragraph 2(m) of the Unfair Competition Act, 1932, do not appear in the Trade-marks Act. The words "adapted to distinguish" required that a word not only be distinctive in fact, but secondly, that the word must be inherently adapted to distinguish. In applying the provisions of the Unfair Competition Act certain laudatory words such as Super-Weave were found not inherently adapted to distinguish and therefore could never be registrable based on acquired secondary meaning. See Registrar of Trade Marks v. G.A. Hardy & Co. Ltd. (1949), 10 C.P.R. 55.
IV.10.3.2 Onus
An applicant who contends that a surname or descriptive word has acquired a secondary meaning is under heavy onus to prove it. As Cattanach J. stated in Standard Coil Products (Canada) Ltd. v. Standard Radio Corp. (1971), 1 C.P.R. (2d) 155 at p. 172, when considering whether the mark Standard had acquired a secondary meaning in Canada in association with the wares television tuners:
It remains for me to assess the probative value of such evidence. In so doing I am conscious that the onus on a person contending that a trade mark which is descriptive or laudatory of his wares has come to actually distinguish those wares is a heavy one and that onus is increased by the adoption of a word which lacks inherent distinctiveness.
Also in Carling Breweries Ltd. v. Molson Companies Ltd. (1984), 1 C.P.R.(3d) 191, Strayer J. stated:
I am not only of the view that the onus lay instead on the applicant to prove distinctiveness within s-s. 12(2), but I also think that it was a very heavy onus given the nature of the mark Canadian. There are various authorities to the effect that where one must prove that a normally descriptive word has acquired a secondary meaning so as to make it descriptive of a particular product, the onus is indeed heavy: see, for example, Canadian Shredded Wheat Co. v. Kellogg Co. et al [1938] 2 D.L.R. 145 at pp. 151-2, 55 R.P.C. 125 at p. 142 (J.C.P.C.); J.H. Munro Ltd. v. Neaman Fur Co. Ltd. (1946), 6 C.P.R. 97 at p. 113, [1947] 1 D.L.R. 868, 5 Fox Pat C. 194 at p. 208 (Ex.Ct.). In my view, this is particularly true where the word is one such as 'Canadian' which is first and foremost, legally and factually, an adjective describing any citizen of this country, and more particularly for present purposes any product of any sort having its point of origin in this country. As used in conjunction with the word 'beer' it is capable of describing any such malt beverage produced in Canada by any brewer. The onus, as I have noted above, is on the applicant for registration of such a mark to demonstrate clearly that it has become so distinctive of his product that it has acquired a secondary meaning which would not, vis a vis the relevant public, normally be confused with the primary meaning of the word.
This decision was upheld at the Federal Court of Appeal (1988), 19 C.P.R.(3d) 129.