In what appears to be a case of first impression in Canada, a Federal Court has confirmed that the title of a literary work cannot function as a registered trade-mark in Canada. This is consistent with the law in the US, but the issue has apparently never come before a court in Canada until earlier this year in the obscure but fascinating decision in Drolet v. Stiftung Gralsbotschaft and Foundation of the Grail Movement, 2009 FC 17 (CanLII) .  In that case, the Court decided that several registered trade-marks should be expunged from the register because they were used merely as titles of published works and were “inherently descriptive”. 

Compare this to the registrations for CHICKEN SOUP FOR THE SOUL, Registered, TMA546104, or any one of the HARRY POTTER books. Whenever the title of a successful book series is the subject of a trade-mark registration, care must be taken to ensure the registration can stand on its own as a trade-mark, and is not vulnerable to challenge on the basis set out in the Drolet decision.

Calgary – 10:30 MST