The growth of e-commerce has led to many brands that would have only been available to a small area of the global market to now be available worldwide. This causes business owners many challenges.
One of these challenges is how to produce, market, and protect a brand that will be sold in multiple jurisdictions across the globe. This is because each country has its own process, rules, and regulations that a brand owner must navigate to register a trademark that will protect their brands within that country.
In general, in order for a mark to be registered, it has to be distinctive in relation to the products and services for which registration is sought. But, how is this determined? Is the test for distinctiveness the same all over the world?
This article briefly explores the varying standards of distinctiveness in the United States, Canada, the United Kingdom, Germany, France, Singapore, Canada, and China.
The Purpose of the Distinctiveness Requirement for Trademarks
The fundamental requirement for trademark registration in most countries around the world is distinctiveness. This requirement is equivalent to the requirement for novelty for patent rights and originality for copyrights.
The primary goal of every trademark is to distinguish the products and services of one merchant from those of other merchants. Put another way, trademarks identify the source of the products and services they are associated with.
However, in order to do its job, the trademark itself must be sufficiently distinguishable from other trademarks. A trademark distinctiveness dictates everything from the mark’s ability to be registered to its ability to be enforced, as well as, whether or not it will remain valid once it has been registered.
Some marks achieve distinctiveness via their inherent nature, for example, Nike’s “swoosh” checkmark for sports apparel. But other marks only acquire distinctiveness as a result of marketing that, over time, forms a powerful association in the minds of the buying public.
For example, the term “Raisin Bran” is merely descriptive of the brand of cereal and would not be eligible for trademark registration had the Kellogg company not demonstrated (through evidence of use, including sales, advertising expenditures, and consumer surveys) that the buying public had come to associate the term with this particular Kellogg cereal.
The public’s distinct association of a trademark with a particular merchant is referred to as secondary meaning and can only be established over time.
How is Distinctiveness Determined in the United States?
In order to be registered as a trademark in the U.S., a mark has to be distinctive enough to effectively indicate the source of a product or service. To determine distinctiveness, examiners at the United States Patent & Trademark Office (USPTO) refer to a five-category spectrum of distinctiveness.
This spectrum of distinctiveness ranges from words, phrases, and symbols invented solely to be used as trademarks to words, phrases, and symbols that are so common that they are considered automatically ineligible for trademark protection, including:
- Fanciful marks – automatically registrable with the USPTO as inherently distinctive trademarks. Examples include “Xerox”, “Google”, “Uber”, and “Kodak”.
- Arbitrary marks – such as “Apple” for computers and “Galaxy” for mobile phones, which are not typically used to refer to the products and services being sold.
- Suggestive marks – such as “iPad” for a tablet computer, “Coppertone” for sunscreen lotion or “Upwork” for freelancing platform, which are suggestive of a certain aspect or quality of the products and services being sold. Though suggestive marks are inherently registrable, the less distinctive they are, the more likely evidence of a secondary meaning will be required.
- Descriptive marks – words and phrases, such as “Lightweight” or “Faster”, that only describe a certain quality or aspect of the products and services being sold. A descriptive mark is not eligible to be registered as a trademark unless it has acquired a secondary meaning through use, such as “Sharp” for televisions or “Windows” for computer software.
- Generic marks – marks consisting solely of the common name for a product or service. For example, the term “Basket” for a store that sells baskets. Generic marks are void of distinctiveness and are ineligible for registration in the U.S. What’s more, a product or service can become so familiar in the marketplace, that the public associates it with an entire category of similar products and services. When this happens, a valid trademark can become generic and lose its validity. Examples of this are “Cellophane” and “Aspirin”.
Like in the U.S., distinctiveness is fundamental to trademark protection in Canada. Canada trademark law defines a “distinctive” trademark as one that distinguishes the products and services of one merchant from those of other merchants.
A trademark doesn’t have to be very well-known for it to be considered distinctive in Canada. Instead, a trademark’s distinctiveness depends on its ability to identify the underlying products or services as coming from one particular merchant, even if that particular merchant isn’t well-known.
Canadian Courts typically point to three fundamental requirements that have to be met for a trademark to be deemed distinctive:
- The trademark and the products and service must be associated;
- The owner must use this association while promoting and selling the products and services; and
- The association must differentiate the merchant’s goods and services from those of other merchants.
Like in the U.S., a trademark distinctiveness falls within a spectrum that will dictate the scope of protection offered to it. Fanciful, arbitrary, or fictitious marks are viewed as inherently strong and distinctive trademarks deserving of a broad scope of protection.
Trademarks like “Xerox” and “Kodak” are considered very strong because they are terms that were specifically created to be used as trademarks.