bg_image

Trademarks: Is The Standard of Distinctiveness The Same All Over The World?

Posted on by trademarkangel

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”.

Canada

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. This characteristic makes them well-suited to distinguish the products and services of one merchant from those of other merchants.

On the other hand, marks that lack a distinctive character are only eligible for a limited scope of protection. These marks are regarded as weak because, for example, they are common everyday expressions, merely describe or suggest some aspect of the products and services being sold, or they are customarily used as names or surnames.

Canadian law also acknowledges that trademark distinctiveness isn’t necessarily inherent in every trademark, but can also be acquired through use or a secondary meaning.

However, unlike in some countries, a trademark in Canada does not automatically acquire distinctiveness after being used for a certain length of time. Instead, the applicant must prove that the trademark has acquired distinctiveness by submitting proof, such as examples of the trademark being used, sales and advertising data, and sample specimens.

Recently, Canada introduced new rules. Trademarks will now be examined for distinctiveness which will make it more difficult to register them. For example, if a trademark is not distinctive, it may be a ground for refusal.

The United Kingdom

In the United Kingdom (UK), distinctiveness is also a requirement for trademark registration. However, there is no real objective test to measure a trademark’s distinctiveness. Instead, the UK Intellectual Property Office will take into consideration all pertinent evidence when evaluating a mark’s distinctive character, including:

  • The share of the market garnered by the products and services being sold;
  • The amount spent on promoting the mark; and
  • The intensity and duration of the mark’s use as a designation of origin for the particular goods and services being sold.

In the UK, a trademark will be seen as inherently distinctive if it enables consumers to immediately recognize the origin of the goods and services being sold.

However, even if the mark is considered to lack distinctiveness, it can still be registered if, prior to the date of registration, it acquires distinctiveness throughout a significant portion of the geographic region where it will be marketed. For example, if the products and services will be marketed and sold in the UK, the applicant must submit proof that the mark has become distinctive throughout a substantial portion of Great Britain.

Germany

Like the UK, Germany will regard a mark as inherently distinctive if it is recognized by the buying public as an indication of origin. Conversely, a lack of distinctive character, as it relates to goods and services being sold, is a definite ground for rejection.

It should be noted that if a trademark refusal during examination is based on lack of distinctiveness, this is considered an “absolute” ground of refusal and examiners at the German Trademark Office are unlikely to change their mind once they have made a decision that a trademark is not distinctive. If this happens, it’s usually easier to re-file rather than fight the refusal.

If a mark is not distinctive, it can still be registered if the applicant can demonstrate that it has acquired distinctiveness through use, which will often require a consumer survey to be done and is extremely difficult to prove.

France

In France, a mark’s distinctive character is also evaluated from the consumer’s perspective. And a mark can only become a trademark if it possesses enough distinctive character to distinguish the products and services for which registration is being sought from those of other merchants.

France regards the following types of marks as completely void of any distinctive character:

  • Marks that only consist of generic terms used to refer to the associated goods and services;
  • Signs that only refer to certain aspects of the products and services being sold, such as its purpose, geographical origin, quality, or value; and
  • Signs that only refer to the shape or purpose of the product

Like in the UK, a mark that is not distinctive may acquire distinctiveness after the application for registration has been submitted. However, to prove acquired distinctiveness, the applicant must show evidence of a lengthy, noteworthy, and well-known period of use.

Singapore

For a mark to be registered in Singapore, it must be inherently distinctive or have acquired distinctiveness through use. To decide if a mark has the requisite distinctive character, the courts in Singapore will ask if the average consumer would recognize the mark as a trademark for the products and services being sold without being told.

Purely fanciful, inventive, and arbitrary marks are all inherently registrable in Singapore. But, marks of a purely laudatory nature are not.

A mark can nevertheless be registered if it acquires distinctiveness through use. To determine if the mark has acquired distinctiveness, several factors will be evaluated, including:

  • The share of the market the products and services have secured;
  • The intensity with which the mark has been used, how widespread its use has been, and for how long;
  • The amount of money spent on promoting the mark; and
  • The percentage of the buying public who can actually identify the vendor who provides the products and services being marketed under the mark.

China

In China, the following types of marks are barred from being registered as trademarks:

  • Marks that only consist of the generic name or product number;
  • Marks that simply describe the quality, ingredients, weight, or other aspects of a product or service; or
  • Marks that otherwise lacks distinctiveness.

Trademark examiners in China may also take into consideration the mark’s simplicity, complexity, particular composition, and color scheme, as well as, the nature of the packaging the mark is commonly displayed on and how well-known the mark has become.

What’s more, while a mark may acquire distinctiveness through usage, even a mark that has already acquired distinctiveness worldwide will still have to pass the test described above.

For More Information Contact Trademark Angel

If you are wondering if your trademark has the necessary distinctive character to properly protect your brand, call us to consult with a knowledgeable trademark attorney. We will be happy to answer any questions you have regarding an existing trademark registration or one that you would like to register.

Contact Trademark Angel in Canada at 226.246.2979, or visit our contact page to book an initial consultation.

 

What is a distinctive trademark? Trademark distinctiveness and why it matters

Posted on by trademarkangel

Trademark Distinctiveness

Article 1

In June of 2019, The Canadian Intellectual Property Office (CIPO) has implemented some changes to its examination procedure for trademark registration. One of these changes is the addition of an examination for distinctiveness.

Previously, applications for trademark registration were not subject to any examination for distinctiveness. Issues regarding a mark’s distinctiveness were only entertained with regard to someone opposing its registration.

It is currently unclear exactly what standard the CIPO will use to evaluate a mark’s distinctiveness, however, evidence of distinctiveness may certainly be required for any mark that is not inherently distinctive.

Furthermore, this new requirement will apply to all trademark applications, including those pending at the time the changes are implemented.

It is, therefore, important that you understand what makes a mark distinctive and that you choose a sufficiently distinctive trademark for your brand.

What is Distinctiveness?

Distinctiveness refers to a mark’s ability to distinguish one source of goods and services from others in the mind of the consumer. The following are some of the most distinctive marks in the world:

  • Apple
  • Microsoft
  • Google
  • Coca Cola
  • IBM
  • McDonald’s
  • Samsung
  • Toyota
  • General Electric
  • Facebook

Generic Marks, like the word “Vegetarian”, that might hang over a food stall in a food court, are at the opposite end of the spectrum. This may be the term used to describe the type of food on offer, but it has no distinctive character and cannot be used to distinguish anyone vegetarian food stall from another. And therefore, cannot be protected as a trademark.

Descriptive Marks merely describe a quality, feature, function, or characteristic of the goods and services offered. Examples of descriptive marks include:

  • Best Restaurant
  • Sixth Avenue Restaurant
  • Best Buy (for retail store)
  • Bank of America

Trademark registrars view descriptive marks sceptically and it may be impossible to register such marks in many countries.

Suggestive Marks usually suggest the quality or nature of the products or services, but don’t quite describe them. Some imagination is required to understand what the product is. Examples are:

  • Airbus (for aeroplanes)
  • KitchenAid (for kitchen appliances)
  • Greyhound (for bus transportation services)
  • Quick Stop (for convenience shop)
  • Coppertone (for tanning lotions)

Arbitrary Marks have a common meaning but it’s unrelated to the goods or services offered for sale under the mark. Examples of arbitrary marks are:

  • Apple (for computers and cell phones)
  • Comet (for cleaning preparations)
  • Subway (for fast food restaurants)
  • Google (for search engines)

Fanciful (or also called invented or coined) Marks are the most distinctive of all. These are terms, such as Exxon or Xerox, that were invented to be used as trademarks, but had no prior meaning. These marks are inherently distinctive and have the ability to distinguish their owners as soon as they are created. Some other examples of fanciful trademarks:

  • Keurig (for coffee brewers)
  • Zappos (for shoes)
  • Nikon (for electronic equipment)
  • Target (for retail shopping centre)

How to Choose a Distinctive Trademark

If you own a business and want to stand out from your competitors and protect your distinctiveness, you will want to register a trademark for your goods and services. However, your trademark registration will be rejected if the mark you wish to register is not sufficiently distinctive.

So, how can you choose a trademark that is distinctive enough to be registrable?

There are essentially 3 ways:

1.   Your Mark Must Be Inherently Distinctive

For your trademark to be considered inherently distinctive, it will be tested against the likelihood that other businesses would want to use the same or a similar trademark in relation to their goods and services.

Consequently, the more fanciful and out-of-the-box your trademark is in relation to the industry in which it will be used, the more distinctive it is. For example, if you operate a flower shop and want to use the words “floral” or “flowers” as a trademark, you will not meet the test, as other flower traders would also want to use these words to describe their own flower services.

However, if you were to use a made-up or fanciful mark like “Florixio”, “Floralia” or “Daffotulip” for your trademark, they would be more likely to be accepted, as they don’t have a meaning and it is unlikely that other floral business would choose the same word.

2.   Your Mark Must be Distinctive Within the Context That it is Used

There is some leniency if your trademark is not inherently distinctive. The registrar will also consider the extent to which your trademark is distinctive within the context of its intended use and any other relevant circumstances.

As an example, the word “Fineform” has been used to describe lingerie. While this mark is descriptive in nature, it is not commonly used in the world of lingerie. It was therefore held to be distinctive within the context that it was being used. Furthermore, when shown with evidence of sales and promotion using the mark, the company was able to register it as a trademark.

Similarly, if your floral shop was able to create a signature bouquet and wanted to use the trademark “Curvy & Blurry” to name it, you may be able to trademark this, as it is not a phrase typically used to describe a bouquet of flowers. But remember, you may have to show evidence of other relevant factors such as sales and promotions.

3.   Your Mark May Have Acquired Distinctiveness

Sometimes, a generic mark that would normally be rejected for not being distinctive can become factually distinctive due to extensive use by consumers, so much so that, in the minds of consumers, it is strongly associated with a particular set of goods or services. This is called acquired distinctiveness or secondary meaning.

To show acquired distinctiveness, you may be required to present evidence that consumers immediately recognize and associate the mark with your goods and services, and that you have made efforts to market it through sales and promotions. And in this way, a generic or descriptive the mark may be deemed registrable if it has sufficiently acquired distinctiveness.

A great example of this is Cadbury Chocolate. Cadbury was able to retain the exclusive right to use a particular shade of purple because, after 100 years, the color had become synonymous with their brand of chocolates.

In contrast, the agricultural cooperative Ocean Spray had only used the term “Cranberry Classic” in their fruit juice products and promotional activities for 2.5 years and, as a result, this was deemed not long enough for the trademark to be deemed distinctive in relation to their fruit juice products.

Another example of acquired distinctiveness is “Best Buy”, the trademark for the multinational retailer of consumer electronics. At first, this trademark was deemed “merely descriptive.” However, because the trademark has been in continuous use in association with the company’s retail stores since 1982 and is so widely known as a result of its vigorous marketing and advertising activities, multitude of stores, and prominence in the market for consumer electronics, the mark is now regarded as a distinctive trademark and immediately recognized by a considerable portion of the buying public in North America and abroad.

Summary

To summarize, no matter how fantastic your goods and services are, you are unlikely to do well in the marketplace unless they are easily distinguishable from those of your competitors, and more importantly, that this distinctiveness is protected.

As discussed above, to accomplish this you, you will need to show that your trademark is distinctive by proving that it is either:

  1. Inherently distinctive;
  2. Distinctive within the context that it is used; or
  3. Has acquired distinctiveness through use in the market

For help ensuring that the trademark you want to register for your brand meets the distinctiveness requirement for registration, contact Trademark Angel in Canada at 226.246.2979, or visit our contact page to book an initial consultation.