Clearly descriptive or deceptively misdescriptive marks
Mastering the Law of TrademarksCanadian trademark legislation precludes the registration of marks that are, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of:
- the character or quality of the goods or services in association with which the mark is used or proposed to be used;
- the conditions of their production;
- the persons employed in their production; or
- their place of origin.
An exception is made for marks that have become distinctive.
The policy underlying the prohibition against descriptive marks is that no one should be allowed a monopoly on words that should belong to all competitors. Generally, descriptive words are considered the property of all and cannot be appropriated by one person for their exclusive use. For instance, all competitors have the right to use words that describe the character or quality of their goods or services, or the name of the geographic location from where their goods or services emanate.
Similarly, there is also a public interest aspect to prohibiting deceptively misdescriptive marks, which is the desire to protect consumers from deception.
First impressions matter
In order to determine whether or not a mark is clearly descriptive, it is necessary to consider the first impression the mark would have on the average consumer of the type of goods or services the mark is associated with. Where the first and immediate impression is that the mark clearly describes the character or quality of the goods or services, the mark is not registrable.
TEACHERS'
TEACHERS' has been refused registration as a trademark in association with services described as the "[a]dministration of a pension plan, management and investment of a pension fund for teachers in Ontario". The Federal Court of Appeal found that a normal or reasonable person would, on first impression, conclude that trademark TEACHERS' clearly described the character of the services. Thus, the trademark was not registrable.
View the decisionPerspective of the average consumer
The first impression must be assessed from the perspective of the ordinary, everyday purchaser or user of the goods or services with which the trademark is used or proposed to be used with. It is the ultimate user who is to be considered and not a person having expert qualifications or specialized knowledge. The perspective of experts or people in the industry with special knowledge is not necessarily representative of the average, ordinary purchaser or user.
SUPERWASH
SUPERWASH has been refused registration as a trademark for sweaters made of shrink resistant wool. The Federal Court stated that, in considering whether the expression SUPERWASH was clearly descriptive, the Court had to put itself in the position of the everyday user of the goods. The Court concluded that the ordinary user or dealer in wool sweaters would know that wool is susceptible to shrinkage when washed. The everyday user, as a matter of first impression, would have concluded that trademark SUPERWASH, applied to particular wool goods, described a garment that washed very well with little or no shrinkage. Thus, the trademark SUPERWASH was clearly descriptive of the character or quality of the goods and could not be registered.
Based on impression, not on research
The determination of whether a mark is clearly descriptive or deceptively misdescriptive is one of immediate impression; it must not be based on research into the meaning of words. However, some assistance may be provided by dictionaries.
HYPER-FORMIDABLE
HYPER-FORMIDABLE has been refused registration as a trademark for services connected to the operation of supermarkets. In attempting to ascertain the meaning of the trademark HYPER-FORMIDABLE, the Federal Court said that the etymological meaning of a word is not necessarily the meaning of that word in the popular context in which and how it is being used. However, dictionaries can be used to determine the meaning of words in their ordinary or popular sense. The Court referred to dictionaries to ascertain the meaning of the words "hyper" and "formidable" and the resultant meaning of the combined words "hyper-formidable". The trademark conveyed the meaning of something more fantastic, sensational or extraordinary than if the word were merely "formidable" without the prefix "hyper". Thus, the trademark was clearly descriptive or deceptively misdescriptive of the quality of the services.
Viewed in context, not in isolation
A mark must not be considered in isolation or in a vacuum when ascertaining its initial impression. Instead, it must be viewed in the context of the associated goods or services. Accordingly, a mark may have many meanings, but it is only the meaning of the mark in the context of the goods or services at issue that matters.
SUPERSET
SUPERSET has been refused registration as a trademark for telephones. The Federal Court found that the word "set", by itself, does not necessarily focus the mind on a telephone set, but instead awakens many and diverse first impressions. For instance, a person passing by a tennis court would relate the word "set" to the game of tennis, and a customer in a furniture store would associate the word "set" with a bedroom set or a dining room set. But in a telephone store, or glancing at advertisements of telephone sales, a customer would probably link the trademark SUPERSET to the telephone sets on display and form the impression that the telephones offered for sale are of a superior quality. Thus, the Court concluded that the trademark SUPERSET was clearly descriptive of telephones and unregistrable.
Clearly descriptive, not merely suggestive
Although clearly descriptive trademarks are not registrable, suggestive trademarks are registrable. "Suggestive" means it would require some imaginative reasoning or mental gymnastics in order to reach the conclusion that the character or quality of the goods or services is described by the trademark. A trademark is also considered suggestive if there is a covert and skillful allusion to the character of the goods or services. "Clearly descriptive" means no such imagination or multi-step reasoning is required in order to reach a meaning; rather, the meaning is instantly apparent and the trademark describes the goods or services in a manner that is "easy to understand, self-evident or plain". If the average consumer is unclear or uncertain as to the significance of the trademark in relation to the goods or services, or if the trademark is suggestive of a meaning other than one describing the goods or services, then the trademark is not clearly descriptive.
KIDFITTERS
KIDFITTERS has been allowed registration as a trademark for clothing, including jeans. The Federal Court noted that the word "kidfitters" has many meanings. The combination of the dictionary definition of each of the words "kid" and "fitters" would be "a person who fits apparel to young children", which is a service. An extension of that meaning would be to the goods designed and manufactured from that design to fit children, or more simply "children's wear". The Court concluded that to attribute the meaning to the trademark KIDFITTERS that it is "clearly descriptive of the character of those wares in that they are designed to fit children rather than the service that the manufacturer performs is an exercise in mental gymnastics. Perhaps not an advanced exercise but an exercise nevertheless." Thus, the trademark was not clearly descriptive and could be registered.
Deceptively misdescriptive
A mark that is deceptively misdescriptive of the character or quality of the goods or services in association with which it is used, or proposed to be used, is unregistrable.
SHAMMI
SHAMMI has been refused registration as a trademark for transparent polyethylene gloves. The word "shammi" was found to be deceptively misdescriptive of such gloves, and thus unregistrable, because a transparent polyethylene glove does not contain one scintilla of chamois or shammy.
Further Learning Resources
Canada's Trademarks Act governs the registration of trademarks. By virtue of paragraph 12(1)(b) of the Act, no one can get a monopoly for certain clearly descriptive or deceptively misdescriptive terms. Paragraph 12(1)(b) must be read in conjunction with subsection 12(2), which provides an exception for trademarks that have become distinctive at the date of filing an application for their registration. Applications under subsection 12(2) are territorially restricted pursuant to subsection 32(2).
The Trademarks Examination Manual is published by the Canadian Intellectual Property Office (CIPO) and includes an entry on paragraph 12(1)(b) of the Trademarks Act (at §IV.6 of the Manual).
The material made available on this website does not constitute legal or professional advice and should not be relied upon as such. Always obtain legal advice promptly in deciding an appropriate course of action for your particular situation.