Unique aspects of trademark prosecution in Canada

Examiners can reject a trademark application on the basis that the mark lacks distinctiveness. While amendments to the trademarks law in Canada have made it more difficult to register inherently weak marks, there are options available to applicants.  Experts discussed unique aspects of trademark prosecution in Canada at a recent webinar hosted by Smart & Biggar.

“A trademark actually distinguishes by acquiring distinctiveness through use,” said Tierney GB Deluzio, associate and trademark agent at Smart & Biggar who spoke during the webinar. “Acquired distinctiveness is something that is gained or earned over time, and it can happen to any trademark and depends on the extent of use.” By contrast, Deluzio said that inherent distinctiveness is intrinsic to the trademark itself.

While the distinctiveness of a trademark has always been important in Canadian trademark law, the distinctiveness of a trademark was not substantively taken into account during the examination process in Canada until Canadian trademark legislation was overhauled in 2019. The Trademarks Office now has the power to object to the registration of an application on the basis that the trademark lacks distinctiveness, Deluzio said. If an applied for trademark meets certain criteria, the examiner will raise a distinctiveness objection, often related to a name or description.

To overcome a distinctiveness objection, applicants can file a written response, arguing that the mark possesses at least some inherent distinctiveness, Deluzio said. As distinctiveness is a spectrum, the threshold for distinctiveness is quite low. While the individual components of a mark might lack distinctiveness, the trademark, when properly considered as a whole, might meet the required threshold.

“Based on our experience over the past three years, arguments against distinctiveness objections have had mixed results, but with three years of experience does come improvements as both sides - the Trademarks Office and practitioners - learn to adapt to the new law,” said Deluzio.

It is important to remember to consider distinctiveness when developing a filing strategy, Deluzio added. Applicants must weigh the pros and cons of either obtaining an early filing date or delaying the filing in order to wait for substantial use of the mark to occur first.

Use of a trademark is not required to obtain a Canadian registration, since changes to trademarks law came into effect in 2019.

“In the past, you would have to state whether you were filing based on use of the mark or proposed use, or based on foreign use and registration of the mark, but none of that is required any more,” said Kwan T. Loh, counsel and trademark agent at Smart & Biggar who also spoke during the event.

However, use remains critically important when it comes to enforcing a trademark against third parties, Loh added.