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Trade-Marks Guide (page 3 of 13)

What you can and cannot register as a trade-mark

What can you register?

Your trade-mark will qualify for registration as long as it does not contravene the Trade-marks Act, which sets out the requirements for registration. For more detailed information, consult the Trade-marks Act.

What can't you register?

The kinds of marks that you may not register include the following:

• names and surnames;
• clearly descriptive marks;
• "deceptively misdescriptive" marks;
• words that denote a geographical location commonly known to be the place of origin of such goods or services;
• words on other languages;
• words or designs that are considered confusing with a previously registered trade-mark or pending trade-mark; and
• words or designs that nearly resemble a prohibited mark.

Names and surnames

A trade-mark may not be registered if it is nothing more than a name or surname (for example, John Doe or Jane Smith, Wong, Cohen, etc.).

An exception to this rule is if you can prove that your goods or services have become distinctive under the name or surname so that the word has acquired a secondary meaning in the public mind. Another exception is a name or surname that has meaning other than strictly as a name or surname, that is, it is also a recognizable word or the name of a community, city, town, river, castle, etc. In such cases, you could register your last name for use in association with your business, as long as there were no other reasons to refuse your application.

Clearly descriptive marks

You may not register a word that describes an inherent feature of the goods or services (i.e., a word that is clearly descriptive).

For example, the words "sweet" for ice cream, "juicy" for apples, and "perfectly clean" for dry-cleaner services could not be registered as trade-marks. All good apples could be described as "juicy" and all ice cream as "sweet"; these are natural characteristics of the items. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods; this would be unfair. But, again, if you can establish that "Sweet Ice Cream" has become so well-known that people will immediately think of your product (and no one else's) when they read or hear these words, you may be allowed to register the trade-mark.

"Deceptively misdescriptive" marks

A further restriction arises when a mark is "deceptively misdescriptive" (clearly misleading). For example, you could not register "sugar sweet" for candy sweetened with artificial sweetener or "air express" for a courier service that uses ground transportation.

Place of origin

You may not register a word that uses a geographical location commonly known to be the place of origin of the goods or services. Allowing you to use such place names as part of your trade-mark would give you a monopoly with respect to a geographical term; this would be unfair to others. For example, you could not register "Italy" for lasagna. However, you conceivably could register the words "North Pole" as your trade-mark for bananas, since one would not normally expect bananas to come from the North Pole.

In addition, you may not register a word that misleads the public into thinking that the goods or services come from a certain place when they do not. For example, "Paris Fashions" or "Denmark Furniture" could not be registered as a trade-mark for those particular goods or services if those goods or services did not originate from that geographical location.

Words in other languages

Words that constitute the name of the goods or services in another language such as: "gelato," Italian for "ice cream"; "anorak," Inuktitut for "parka"; or "wurst," German for "sausage", may not be registered.

Avoiding confusion

Beware of words, designs, and ideas that are similar to another person's or another organization's trade-mark. If your trade-mark is confusingly similar to a registered trade-mark or a pending trade-mark, it will be refused.

Trade-mark examiners take into account various factors when determining whether trade-marks are confusing, including:

• whether the trade-marks look or sound alike and whether they suggest similar ideas; and
• whether the trade-marks are used to market similar goods or services.

Let us go back to the example of "North Pole" ice cream. Suppose another company were manufacturing and selling frozen-water products under the registered trade-mark "South Pole." The public could easily conclude that "North Pole" and "South Pole" products are manufactured and sold by the same company, and may expect that the trade-marks would be owned by the same organization. Hence, your application to register "North Pole" may be turned down on grounds of causing confusion with the registered mark "South Pole," which is owned by another company.

For more information on confusingly similar trade-marks, please see subsection 6(5) of the Trade-marks Act.

Prohibited marks

You may not register a trade-mark that bears resemblance to certain official marks unless you have the consent of the authority in question. These official designs include the following:

• official government designs, for example, the Canadian flag;
• coats of arms of the Royal Family;
• badges and crests such as those of the Armed Forces and the letters RCMP;
• emblems and names of the Red Cross, the Red Crescent, and the United Nations;
• armorial bearings, flags, and symbols of other countries; and
• symbols of provinces, municipalities, and public institutions.

Subject matter that is obscene, scandalous, or immoral is also prohibited. For example, your trade-mark may not include profane language, obscene visuals, or racial slurs.

Another prohibition applies to the use of portraits and signatures of living persons or of persons who have died within the preceding 30 years. For example, using the photo of an existing rock group to promote your record store would be prohibited unless you had formal consent to do so.

Further prohibitions

A trade-mark will not be allowed to be registered if it consists of a plant variety denomination (right granted to the owner with respect to control over the multiplication and sale of reproductive material for a particular plant variety), or is a mark so nearly resembling a plant variety denomination that it is likely to be mistaken for it, where the application covers the plant variety or another plant variety of the same species.

A trade-mark will not be registered if it is, in whole or in part, a geographical indication of origin for wines or spirits, where the application is in respect of a wine or spirit that is not produced in the territory indicated by the designation.

Examples of what you may register

Examples of what you may not register

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