Below is an excerpt from John McKeown's February 2019 Monthly IP Blog.
We previously discussed the limitations concerning descriptive trademarks. If all else fails a brand owner may have to file evidence of acquired distinctiveness to overcome an objection to obtain a registration.
Subsection 12(2) of the Trademarks Act can provide relief for a clearly descriptive trademark that is otherwise not registrable if the mark has been used in Canada by the applicant or its predecessor in title, and the mark has become distinctive at the date of applying for its registration.
What is Required?
An applicant who claims that its trademark is registrable under the subsection must file with the Registrar evidence consisting of an affidavit or statutory declaration establishing the extent to which, and the time during which, the trademark has been used in Canada and any other evidence the Registrar may require to support the claim. The onus of showing acquired distinctiveness is on the applicant. While this has been categorized as a heavy burden, the standard of proof remains on the balance of probabilities and reference to a heavy burden refers to the exceptional nature of the subsection.
The subsection may be satisfied by evidence of acquired distinctiveness in a defined territorial area in Canada, such as a specific province or provinces. In such a case the Registrar will restrict the registration to the defined territory in which the trademark has been shown to have become distinctive.
What is decided?
The issue is whether the mark has been used in Canada and become distinctive at the date of applying for its registration. A claim of acquired distinctiveness depends on all the circumstances relating to the use of the mark. Exclusive use of the mark may be compelling evidence but is not an absolute requirement. A trademark with acquired distinctiveness in a substantial portion of the relevant market may be registered.
In considering the evidence presented, the methods employed in selecting each individual who swears an affidavit will be assessed to determine whether they are representative. Leading questions or other inappropriate practices must not be used to obtain evidence. Survey evidence, if reliable and valid, may be used to show acquired distinctiveness.
Comment
The existence of this exception can be very helpful but unfortunately, gathering the required evidence and presenting it in affidavit form can be time consuming and expensive.
Once the amendments to the Act are in force in June of this year, there will be an expanded ability for examiners to require that such evidence be filed where the examiner considers that the applied for mark is not inherently distinctive or, the applied for mark is a non-traditional mark.
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.
