Overcoming a Descriptiveness Objection to a Canadian Trademark Application

In Canada, one of the most common reasons a trademark application is refused is that the proposed mark is considered either clearly descriptive or deceptively misdescriptive of the associated goods or services. This is based on Paragraph 12(1)(b) of the Trademarks Act, which aims to keep necessary descriptive terms available for all businesses to use. No single trader should have a monopoly over a word that simply tells the consumer what the product is.

Understanding the nuances of this examination is essential for successful brand registration.

The Two-Part Test for Descriptiveness

CIPO examiners apply a stringent test to determine if a mark violates 12(1)(b), focusing on the consumer's perception.

1. Clearly Descriptive

A trademark is clearly descriptive if, as a matter of first impression, it directly describes the character or quality, condition of production, persons employed in the production, or the place of origin of the goods or services.

The test is based on the immediate impression the mark creates for the average consumer of ordinary intelligence. The examiner does not rely on archaic or highly specialized meanings; only the meaning in common parlance. Crucially, the mark must be descriptive in relation to the goods or services listed. For example, "FAST" is descriptive for delivery services but arbitrary for a type of coffee mug.

The objection can be raised not only for what the word is written as, but also for how it is sounded. For instance, a mark spelled phonetically, like "KOLD ONE" for refrigerated beverages, would likely be deemed descriptive of the character/quality of being cold. This is known as the "Sounded" test.

2. Deceptively Misdescriptive

A mark is deceptively misdescriptive if it gives the consumer a false impression about the goods or services that is likely to deceive them. The mark must falsely describe a characteristic, quality, or place of origin. Importantly, the consumer must actually be deceived into believing the goods or services possess that characteristic when they do not (e.g., using "SWISS CHOCOLATE" on chocolate that is made in Canada, which would be deceptively misdescriptive of the place of origin).

Key Areas of Examination

The descriptiveness test extends beyond simple dictionary definitions to cover various scenarios where a mark may be considered too generic or misleading:

• Character or Quality: The mark must not directly describe a feature or property of the product (e.g., "SWEET" for candy; "SMART" for software). If a mark only suggests character or quality, it may be acceptable, but direct description is not.

• Conditions and Persons of Production: Terms relating to the conditions of production (e.g., "OVEN BAKED" for bread) or the persons employed in the production are scrutinized. Marks that resemble a professional designation (e.g., a known abbreviation like "P.Eng" or "C.A.") are typically non-registrable for related services.

• Geographic Names and Origin: Using a geographic name in a way that describes the origin of goods or services is objectionable, especially if it is deceptively misdescriptive of the place of origin. The inclusion of generic elements like Top Level Domains (TLDs) (e.g., .COM or .CA) or the Hashtag (#) symbol does not typically rescue an otherwise descriptive mark.

• Bilingual Assessment: The mark must be non-descriptive in both the English or French language. If a word is descriptive in French, it is objectionable even if the application is filed primarily in English.

• Abbreviations and Combinations: If the full descriptive phrase is commonly known, the abbreviation, acronyms or initials are also objectionable. In composite trademarks, the objection applies if the descriptive word is the dominant feature or if the mark as a whole still conveys an immediate descriptive message.

• Embellishment: Simply adding minor stylistic changes or embellishment to a descriptive word (e.g., a common font or adding a period) is generally not enough to overcome the objection.

Overcoming a Descriptiveness Objection

A 12(1)(b) objection is serious, but there are two primary routes to overcoming it:

1. Legal Argument: If the mark merely suggests a characteristic rather than clearly describes it, or if the examiner's interpretation of the common meaning is incorrect, a detailed legal argument can be submitted, supported by dictionary definitions or trade usage evidence.

2. Acquired Distinctiveness: If the mark has been used extensively and consistently in Canada over time, you can try to prove acquired distinctiveness (secondary meaning). This involves submitting substantial evidence of sales, advertising, and public recognition to show that the mark, though originally descriptive, is now primarily recognized as an indicator of your company's source.

Secure Your Brand with Alphabetica Law

The line between a suggestive, registrable mark and a clearly descriptive, objectionable mark is often blurry and highly technical. If you've received a 12(1)(b) objection, our trademark lawyer at Alphabetica Law can expertly prepare a compelling legal submission to overcome the refusal. Contact us today.