The Trademarks Act provides that a trademark is not registrable if it is, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French languages of the character, or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin.
There are two underlying policies associated with this limitation. First, it prevents applicants from monopolizing descriptive words and preventing competitors from using those words to describe their products. Second, it prevents the public from being misled by the use of deceptively misdescriptive marks.
The First Impression
The test for determining whether a trademark is either clearly descriptive or deceptively misdescriptive is the immediate or first impression formed by the ordinary user or purchaser of the goods or services in issue. The determination is not based on research into or critical analysis of the meaning of the words. The common meaning of words in their ordinary and popular sense must be determined and the perspective of experts or people with special knowledge may not be representative of the average ordinary purchaser. If part of a mark is objectionable, the mark as a whole must be considered to determine what an ordinary user, on encountering the mark, would consider to be the defining characteristics of the mark.
The addition of design features to a composite mark may not be sufficient to avoid the limitation. A trademark which when sounded is clearly descriptive of the character or quality of the ware(s) or service(s) in issue, may not be registrable despite the existence of the design features. In order to determine whether the design features are sufficiently distinctive to result in a registrable mark, the first impression created by the mark must be considered. If the substance of the mark is the design, the prohibition should not apply. If the substance of the mark is a word or words which can be sounded and are clearly descriptive, the mark may not be registrable.
While there is agreement concerning the principles that apply to determine whether a trademark is either clearly descriptive or deceptively misdescriptive, the application of the principles in a specific case can be difficult. There are many reported cases dealing with "clearly descriptive" marks which are difficult to reconcile.
A trademark that is not registrable by reason of this provision is registrable if it has been so used in Canada by the applicant or its predecessor in title as to have become distinctive at the date of filing of an application for its registration. A non-Canadian trademark owner may also claim the benefit of section 14 to obtain a registration in Canada based on a trademark which has been duly registered in the applicant's country of origin, if among other things, the mark applied for is not without distinctive character in Canada, having regard to all of the circumstances including the length of time during which the mark has been used in any country. However, section 14 will not be available in the future since it has been removed from the Act by the amending legislation.
Clearly
The word "clearly" in the subsection means "easy to understand, self-evident, or plain". It is not synonymous with "accurately". The limitation will apply only if the trademark is clearly descriptive or deceptively misdescriptive. The concept of "clearness" is an essential element to preclude registration.
Deceptively Misdescriptive
To be deceptively misdescriptive a trademark must first be found to be descriptive and then be found to mislead the public as to the character or quality of the wares or services. The test applied is whether an ordinary consumer in Canada would be misled concerning the goods or services with which the trademark is associated. The trademark SHAMMI applied for use in association with a transparent polyethylene glove, which did not contain any chamois or shammy leather, was found to be deceptively misdescriptive contrary to the subsection.
English or French Language
The reference in the Act to the English or French languages requires a determination of the usage on an international basis and not simply the English or French meanings then current in Canada. A descriptive connotation in a foreign language will not preclude registration unless an ordinary consumer in Canada of the wares or services in issue would understand the mark as being clearly descriptive.
If a word is new to the English or French languages, it may not be clearly descriptive. However, the word must not be a dictionary word and be without a clearly discernible meaning.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
