Descriptive Trade-marks in Canada


Who can get a monopoly on a particular word? Is it fair for someone to get a trade-mark for the word TEACHERS’? Under Canadian trade-mark law, there’s nothing stopping a company from obtaining a trade-mark over almost any word, as long as it meets the registration criteria. One of those criteria is that the word cannot be descriptive of the product or service that’s being provided. In Ontario Teachers’ Pension Plan Board v. Canada (Attorney General) 2011 FC 58, the Federal Court decided that the word TEACHERS’ is not registrable by the Ontario Teachers’ Pension Plan. The court decided that the word TEACHERS, describes an “intrinsic character of the administration, management and investment of a plan/fund for teachers” and so the word should be available for others to use. “Descriptive words,” the Court confirmed, “are the property of all and cannot be appropriated by one person for their exclusive use.” 

Lessons for business?

  • Remember: This doesn’t mean that all adjectives are ineligible for registration. The word SWEET (TMA687821) is a registered trade-mark in Canada for “Plant nutrients and supplements namely plant food” because the word does not describe the character or quality of the product. However, the word SWEET for, say, candy or refined sugar would be clearly descriptive.
  • If you are considering a new brand, get an advanced registrability search from a qualified trade-mark agent. They can advise on both the availaibility (whether someone else has an identical or similar mark) and registrability – including whether the mark is likely to be considered clearly descriptive or deceptively misdescriptive.

Related Reading: Generic Domain Names in Canada  

Calgary – 07:00 MST

1 comment

1 Comment so far

  1. toreilly February 2nd, 2011 3:28 pm

    I think this case is a questionable authority on descriptiveness, because that was not the fundamental problem with the Teachers’ application – it was more a case that their mark was not a “trade-mark” – i.e. they do not “sell” pension services, and therefore do not, in a commercial sense, distinguish themselves from other pension-related entities by using an abbreviation of their pension plan name, regardless of whether that name has a descriptive or suggestive element.

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