Acquired distinctiveness
Mastering the Law of TrademarksUnder Canadian trademark law, a trademark cannot be registered if it is considered to be clearly descriptive or deceptively misdescriptive. One exception is that even if a trademark is clearly descriptive and deceptively descriptive, it is still registrable if it has acquired distinctiveness through its use by the trademark applicant.
In general, clearly descriptive marks are not acceptable as trademarks because they lack distinctiveness, that is, they are not capable distinguishing the goods or services of one person from those of other persons bearing the mark. However, the long use of a descriptive mark with particular goods or services can cause the mark to acquire distinctiveness and thus become registrable. For instance, the trademarks OFF! and ULTRA FRESH, which had been found to be clearly descriptive and thus unregistrable, acquired distinctiveness through their use and were eventually allowed registration under this exception.
Territorial restriction
Trademark registrations for clearly descriptive or deceptively misdescriptive marks are restricted to the territory in which the marks have become distinctive.
ORANGE MAISON
ORANGE MAISON has been allowed registration as a trademark for orange juice. The Supreme Court of Canada found that although the trademark was clearly descriptive of orange juice, the trademark had become distinctive in Quebec and thus could be registered for Quebec only.
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