Top Factors to Consider for a Trademark Name

Create Time 2023-03-31 04:03    Views:18736

A good trademark name is essential for creating a strong brand identity, establishing consumer recognition, and protecting intellectual property rights.

Today, we dive into some of the key factors to consider when deciding on a ‘Word’ trademark, also known as a Standard Characters mark.

1. Confusion.

If your trademark is found to be confusing with a previously applied-for or registered trademark, it is found to be ‘not-registrable’.

According to Subsection 6(2) of the Trademarks Act, confusion would be caused as follows:

The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

So what does this mean?

Two trademarks are found to be confusing if an average consumer may be led to believe that both trademarks (in association with goods and/or services) are coming from the same source.

When an examiner receives your application, they will conduct a test of confusion.

Examiners must put themselves in the position of an ordinary customer and ask whether they (with imperfect recollection) would be likely to infer that the goods or services associated with the applicant’s trademark and those associated with another trademark are manufactured, sold, leased, or hired by the same person.

Confusing trademarks are some of the most difficult trademarks to register.

This is why it's important to conduct a trademark search to ensure your trademark name is available, and is not confusing with other trademarks out there.

2. Primarily merely a surname or a name

According to Paragraph 12(1)(a) of the Act, a trademark is not registrable when it meets the following description:

A word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years.

This is to enable everyone to identify their products or services by their names or surnames and not necessarily give an exclusive right and/or unfair advantage to a single person or a business.

One important part to note is the “primarily merely” part.

If words comprised of a name or surname are followed by words such as “& Sons”, “Brothers”, “Inc.”, “Co.”, etc, they would pass the surname/name issue as they are not “primarily merely” a surname or a name.

Also, if a person in Canada of ordinary intelligence and education would be likely to react to the word by thinking that it’s an invented word or as a brand, it could pass as registrable.

Examples: Drake, Lee Kum Kee*, Tim Horton(s)*,

*If the trademark has acquired distinctiveness at the time of filing of the application, according to Paragraph 32(1)(b), the trademark may be moved to advertisement

3. Clearly Descriptive or Deceptively Misdescriptive

According to Paragraph 12(1)(b) of the Act, a trademark is not registrable when it meets the following quality:

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 it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;

If the trademark simply describes the product or service to be associated, it cannot be registered.

Example: “Child Plan” in association with financial planning, “Canadian Garlic” in association garlic and spices made of garlic from Canada, “THC” in association with cannabis

If the trademark describes the character, quality, or the place of origin of the product or service, it is also found to be descriptive or misdescriptive, therefore not registrable.   

Examples: “RIO” (for possibly referring to Rio de Janeiro, a city in Brazil), “Best Buy”* (suggestive/laudatory of the character and/or quality), “Finest Gold” in association with jewelry, “Eazee” in association with insurance claims

*If the trademark has acquired distinctiveness at the time of filing of the application, according to Paragraph 32(1)(b), the trademark may be moved to advertisement

The trademark must also not mislead the public with a character or quality that it does not possess.

4. Name of Goods or Services

A Trademark is not registrable if it is the name in any language of any of the goods or services in connection with which it is used or proposed to be used; according to Paragraph 12(1)(c) of the Act.

Examples: “Bulgogi” in association with food, “Futsal” in association with sports, “Kefir” in association with dairy, “Entrega” in association with delivery (Portuguese/Spanish)

5. Prohibited Marks

·       Royal, vice-regal or governmental authority (name, arms, crest, standard, flags/ensigns)

·       Red Cross or Geneva Cross

·       Scandalous, obscene, or immoral word or device

·       “United Nations” and its seal or emblem

·       Badges, crests, emblems, or marks of universities

·       Plant varieties under the Plant Breeders’ Rights Act

·       Protected geographical indications for wines, spirits, or agricultural products and food

·       Olympic or Paralympic mark

By considering these factors when selecting a trademark name, you can increase the chance of obtaining registration and building a strong brand identity.

If you’d like to review a new trademark name with us, simply submit your details on our homepage and one of our consultants will reach out to assist.

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