Clearly descriptive

You may not register a word that clearly describes a feature of the wares or services. For example, "sweet" for ice cream, "juicy" for apples, and "perfectly clean" for dry cleaner services could not become registered trademarks.

All good apples could be described as "juicy" and all ice cream as "sweet"; these are inherent characteristics of the wares. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods, which would be unfair. Again, if you can establish that "Sweet Ice Cream" has become so well known that people think of your product (and no one else's) when they hear the words, you might be able to register the trade-mark.

Deceptively misdescriptive

A further restriction is if the mark is not clearly descriptive, but clearly misleading, or in the words of the Act, "deceptively misdescriptive." For example, you could not register "sugar sweet" for candy sweetened with artificial sweetener, and "air express" for a courier service that uses ground transportation.

Place of origin

You may not register a word that clearly designates the place of origin of the wares or services, or that misleads the public into thinking that the wares come from a certain place if they do not. Thus, Paris Fashions, Atlantic Cod, Toronto Courier Service, B.C. Wines, or Danish Furniture could not be registered for those particular wares and services. Allowing you to use place names as part of your trade-mark would be to give you a monopoly on a geographical term and be unfair to others. However, you conceivably could register the words "North Pole" for bananas, since no one would expect bananas to come from there.

Disclaimers

A disclaimer is a statement indicating that the applicant does not claim exclusive rights for a certain word or words appearing in the trademark.

In this way, you can use clearly descriptive words in your trade-mark which are unregistrable on their own (as described above), with the understanding that you have no rights over them.

For example, the trade-mark Northpole Ice Cream (used as a trade-mark for the operation of an ice cream parlour) would require a disclaimer of the words "ICE CREAM" as these are words that are clearly descriptive of the character of the services and should therefore remain available for all to use within this field.

A disclaimer statement is entered on the application (usually the third paragraph) and in the case of the above example would read as follows: "The applicant disclaims the right to the exclusive use of the words ICE CREAM apart from the trade-mark as a whole." therefore, these words are still part of the trademark, but the applicant is not claiming exclusive rights for these specific words.

Words in other languages

Words that constitute the name of the wares or services in another language–such as "gelato," Italian for ice cream; "anorak," Inuktitut for parka; or "Wurst," German for sausage– cannot be registered.

Causing confusion

Beware of words, symbols, sounds and ideas that suggest someone else's trade-mark. If it is confusingly similar to a registered trade-mark or a pending mark, it will be refused. This prohibition makes sense when you recall that the whole point of registering a trade-mark is to protect your corporate identity from imitation or confusion with others. Trade-mark examiners take into account various factors when determining whether trade-marks are confusing.

For example, they determine:

• whether the trade-marks look or sound alike and whether they suggest similar ideas; and
• whether they are used to market similar wares or services.

Let's go back to the example of "Northpole" Ice Cream. Suppose another company was manufacturing and selling frozen water products under the registered trade-mark "Southpole." People might easily conclude that "Northpole" and "Southpole" products are manufactured and sold by the same company.They might expect the trade-marks to be owned by the same entity. Hence your application to register "Northpole" might be turned down on the grounds of causing confusion with the registered mark "Southpole" owned by another company.

Other hypothetical examples of confusing trademarks
would be: "King Dog Food" vs. "King Cat Food" (two companies, two different product lines, but the same trade-mark and the same general area–pet food); and "Glitter" mineral water vs. "Glittering" ginger ale. However, "Glitter" for mineral water could probably co-exist as a registered trade-mark with "Glittering Dry Cleaners" as a registered trade-mark for dry cleaning services, because the wares and services in this example are quite different.

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Check your e-mail tomorrow for Part 5 of the
Guide to Canadian Trademarks.