Area of Law: Intellectual Property
Answer # 306
Does your Trademark qualify for registration?Region: Ontario Answer # 306
There are some trademarks that you cannot register. You should be aware of the following seven restrictions before you apply to register a trademark.
1. Names and surnames
You cannot register a trademark that is essentially a name or surname. There are two exceptions to this rule. First, if you can show that your products or services have become known and recognized under that name, you may be granted a trademark. The second exception is if your name has another meaning. For example, the word Black may be your last name, but it is also a colour.
2. Descriptive words
The second restriction is that you are not permitted to register a mark that clearly describes some aspect of your products or services. For example, the words “cold” for ice cream or “juicy” for apples could likely not be registered. These words describe general qualities of ice cream and apples and it would be unfair to allow only one person to use them. However, if you can show that the mark has become so well known that people think only of your products or services when they hear or see it, then you might be able to register it.
Third, you will not be able to register a mark that is clearly misdescriptive. For example, you likely could not register the mark “air express” for a courier service that uses ground transportation.
4. Place of origin
Fourth, you will not be able to register a mark that clearly describes the place where the product or services came from, or which clearly misleads the public into thinking that the products or services came from a place that they did not. For example, the words “Ontario Wines,” or “Danish furniture” likely could not be registered.
5. Words in other languages
Fifth, words in another language that are the names of the products or services cannot be registered. For example, “gelato,” an Italian word meaning ice cream, and “cervesa,” a Spanish word meaning beer, could not be registered.
6. Words that cause confusion
Sixth, a mark that is confusingly similar with someone else’s trademark will not be registered. In deciding whether a mark is confusing, the Trademark examiner will consider whether the two trademarks look or sound alike, whether they suggest similar ideas, whether they are used with similar products or services, how long the trademarks have been in use, the extent of use, and whether the customers are similar.
7. Prohibited marks
Finally, there are several types of marks that are not allowed. For example, you cannot register official government symbols, the coat of arms of the Royal family, symbols of provinces, municipalities and public institutions, profane language, racial slurs, or obscene drawings.
The Registrar of Trademarks at the Canadian Intellectual Property Office (CIPO) may require a disclaimer for any part of your trademark that is clearly descriptive in nature or which is a name or surname. This means that you will not be able to prevent anyone from using the disclaimed portion of your trademark.
For more information about trademarks, refer to the Canadian Intellectual Property Office.
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