Descriptive of character or quality
Mastering the Law of TrademarksCanadian trademark legislation precludes the registration of marks that are either clearly descriptive or deceptively misdescriptive of the character or quality of the goods or services in association with which the mark is used or proposed to be used.
Character or quality
A mark that is clearly descriptive of the character or quality of the associated goods or services is precluded from registration.
GOLDEN
GOLDEN is not registrable for beer, because the word "golden" describes one of the characteristics or qualities of beer, namely its colour.
Intrinsic character or quality
For a mark to be clearly descriptive and not merely suggestive of a good or service, it must refer to either the material composition of the good or service or an intrinsic character or quality of the good or service.
KOOL ONE
KOOL ONE has been allowed registration as a trademark for beer. The Federal Court of Appeal found that unlike food products such as ice cream, the adjective "cold", when applied to beer, referred only to the condition in which the beer may or may not be sold or consumed, and not to the intrinsic character or quality of the product.
Feature, trait or characteristic
The character of a good or service includes a feature, trait, or characteristic of that good or service.
ONCE-A-WEEK
ONCE-A-WEEK has been refused registration as a trademark for floor cleaner. A Canadian Court found that, on first impression, "once-a-week" clearly implied that the floor cleaner needed to be used only once a week and that one application would endure for that period of time, and that this was an attribute or property that referred to the durable and excellent quality of the product. The trademark was a direct reference to the "character" of the product and therefore could not be registered.
Function, purpose or effect
The character or quality of a good or service includes its function, purpose or effect.
ULTRA FRESH
ULTRA FRESH has been refused registration as a trademark for bacteriostats and fungistats. Bacteriostats and fungistats are chemical compositions that are applied to products such as underwear to prevent the growth of bacteria and fungi. The Federal Court noted that the trademark ULTRA FRESH was not descriptive of the bacteriostats and fungistats themselves at all, but it did clearly describe, or deceptively misdescribe, the condition of the underwear after treatment with those bacteriostats and fungistats. The Court concluded that the trademark ULTRA FRESH was not registrable since it clearly suggested the principal, if not only, effect of the application of bacteriostats and fungistats to other goods, in other words, their function. The Federal Court of Appeal affirmed this decision.
Elliptical expressions
An elliptical expression is one that omits a word or words that are understood in context. What is left out is implied by the context and is unnecessary for clarity. Courts have held that the use of an elliptical expression does not prevent a trademark from being clearly descriptive.
OFF!
OFF! was not registrable as a trademark for personal insect repellent. The Supreme Court of Canada held that because insect repellent will "ward off" or "drive off" bugs, "off" was an elliptical use of the word in association with insect repellent and therefore, in that context, was clearly descriptive of the goods and their effect on insects.
View the decisionLaudatory expressions
Marks that are laudatory expressions or puffery are regarded as being descriptive of the character or quality of the goods or services. For instance, laudatory epithets such as "super" and "perfect" are considered descriptive because they describe a degree of excellence of the goods or services.
RIGHT
RIGHT has been refused registration as a trademark for cigarettes. The Federal Court found that the word "right" had a laudatory connotation that the cigarettes met a specified standard and were desirable and satisfactory. From this it followed that the word "right" was clearly descriptive or deceptively misdescriptive of the character or quality of the cigarettes and therefore could not function as a trademark.
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