Inherent distinctiveness is a measure of a trademark’s originality – those elements that make a brand unique and recognizable to the public. Trademarks indicate the source of goods or services for consumers. As such, distinctiveness is said to be the “essence of a protectable trademark and the foundation of trademark law”.
Canada Now Examines for Distinctiveness
Under the new Canadian trademark regime, which came into force on June 17, 2019, the Registrar of Trademarks (the “Registrar”) may now object to a mark on the basis that it was not distinctive when it was applied for. Section 32(1)(b) of the Trademarks Act (the “Act”) provides:
32 (1) An applicant shall furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application for its registration, determined without taking into account subsection 34(1), if any of the following apply:
(b) the Registrar’s preliminary view is that the trademark is not inherently distinctive
Section 2 of the Act defines “distinctive” as follows:
distinctive, in relation to a trademark, describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them;
Distinctiveness of a Trademark
According to the Trademark Examination Manual (the “Manual”), which is used by trademark examiners to guide them in their review of trademark applications for registration, the phrase “not inherently distinctive” refers to a trademark having “no inherent distinctiveness” – these marks are deemed not registrable. “No inherent distinctiveness” must not be confused with trademarks having a “low degree of inherent distinctiveness” as these marks are registrable.
Trademarks may also acquire distinctiveness through use over time. The Manual warns, however, that trademarks with acquired distinctiveness may still encounter obstacles, as the courts and the legislature have shown “a natural disinclination to allow any person to obtain by registration a monopoly in what others may legitimately desire to use”.
A trademark’s distinctiveness will be analyzed on a spectrum, as set out in the table below:
|High degree of distinctiveness
|Fanciful or Coined Trademarks||Fanciful or coined trademarks are the strongest on the spectrum, as they are composed of letters that have no inherent meaning – they are invented words.
Examples: KLEENEX® for facial tissues, XEROX® for copiers
|Arbitrary Trademarks||Arbitrary trademarks are composed of words that have a common meaning in the language of the relevant jurisdiction, but offers no suggestion as to the source of the goods or services offered in association with the trademark.
Example: APPLE® for computer and electronic products
|Suggestive Trademarks||Suggestive trademarks will provide the consumer a hint or suggestion of the nature of the goods or services offered in association with the trademark, without actually describing the goods or services.
Examples: AIRBUS® for airplanes, SPEEDI BAKE® for frozen dough
|Descriptive Trademarks||Trademarks composed of a word describing the associated goods or services are generally too weak to register. However, trademarks that have acquired distinctiveness, may be able to proceed to registration, if the trademark applicant is able to demonstrate that the applied-for mark has acquired a secondary meaning and is associated to a single source of origin for the product in question.
Example: VISION WORLD® for an optical store
|Generic Words||Generic words that are the common name for the goods or services offered have no distinctiveness and are not registrable.
Example: applying for the trademark SHOES in association with shoes as the offered product
Since the new Act came into force, we have seen an increasing number of objections based on non-distinctiveness. These objections are prolonging the prosecution timelines and increasing costs in trademark applications.
Applicants should therefore keep in mind that when applying for a Canadian trademark, those marks with a higher degree of inherent distinctiveness will not only avoid problems in prosecution, but also likely be afforded a greater scope of protection.
 Trademark Examination Manual, section 4.9.2, citing H.G. Fox, Canadian Law of Trade Mark, 3rd ed. (Toronto: Carswell, 1972) at 25.
 Trademarks Act, RSC, 1985, c. T-13.
 Trademark Examination Manual, section 4.10.3.