Trade-Marks
5. Tips and Strategies to Maximize your Trade-Mark's Effectiveness
(a) Choosing a Trade-Mark
The first step is to choose a trade-mark that suits your service or product. A trade-mark can be a word, name, slogan, symbol, design, package shape, the shape of the product itself, or combination thereof. In some instances, your trade-mark could be a distinctive colour applied in a certain manner, or even a distinctive combination of sounds. Most recently, a distinctive scent as applied to an automobile tire has been recognized as a trade-mark in the U.S.A.. With such a wide range of possibilities for what a trade-mark can be, it might be simplest for you to know what your trade-mark cannot be. As a general rule, there are five (5) basic areas which you must avoid when choosing a trade-mark.
(i) You cannot use a word that is primarily merely the name or surname of an individual who is living or who has died within the preceding thirty years.Names and surnames should be available for use by all traders, as relevant in the context of their own businesses; thus, no single trader should be allowed to trade-mark a surname to the exclusion of all others.
(ii) You cannot use a word(s) which whether depicted, written or sounded, is/are either clearly descriptive or deceptively misdescriptive of the character, quality, or origin of the wares or services which you will provide under the trade-mark. Trade-marks containing words which are only suggestive, but not clearly descriptive or deceptively misdescriptive, may be acceptable, but distinctions of this type can often be quite subtle. In any event, highly suggestive trade-marks are not usually strong trade-marks since they are, at least on a conceptual level, equally suggestive of the goods or services of all competitors in a given market. Such trade-marks do little to distinguish one trader from another.
(a) The rationale for the restriction on clearly descriptive terms stems from concerns for fairness amongst traders. If one trader were permitted to trade-mark a merely descriptive word, such as WHITE for milk, and to assert an exclusive right to use the word, then other sellers of milk would be hindered in their businesses since they could no longer use the word WHITE to describe milk, even though "white" is clearly an integral feature of their products. Similar considerations apply in respect of laudatory words, such as "fresh", "premium", "specialty", etc., and to indicators of geographic origin or descriptions of the conditions of production of wares or services.
(b) The prohibition against trade-marking deceptively misdescriptive words stems from the need to protect the purchasing public from deception or misrepresentation. For example, it would be unfair to use LEATHER as a trade-mark for products which are made of vinyl, since potential purchasers might be misled into believing that they were getting goods of a different character or quality than was in fact being provided under the trade-mark.
(iii) It is not possible to adopt as a trade-mark, the name in any language of the wares or services to be provided under the trade-mark. For example, it is not possible to use a generic term such as BICYCLE as a trade-mark under which to manufacture bicycles (though BICYCLE ™ could be and is used as a trade-mark under which to sell playing cards). Similarly, using APPLE as a trade-mark for the sale of apples is unacceptable; APPLE® for computers is an excellent choice (already owned by Apple Computer, Inc.).
(iv) If your proposed trade-mark is confusingly similar to a trade-mark or trade name of another trader, then you will not be able to use that trade-mark. The question of what is, or is not, "confusingly similar" is sometimes quite difficult. In general, to decide whether one trade-mark is confusingly similar to another, a number of factors are weighed. These factors can be thought of as falling into two categories: intrinsic factors and extrinsic factors.
(c) Intrinsic factors relate to the distinctiveness of each trade-mark in itself. For example is the trade-mark a common word, such as BLUE™, or was it coined especially for use as a trade-mark, such as XEROX™ or KODAK™? What is the impact of a trade-mark in terms of visual appearance, sound, and ideas suggested? How closely does one trade-mark resemble another when one looks at these criteria?
(d) The extrinsic factors take into account the interplay of the trade-marks in the marketplace. The extrinsic factors which are considered include the following: how well known have the trade-marks become? How long have they been used? What goods or services have they been used to promote? Are the products under both trade-marks marketed and sold in the same way (ie., through the same channels of trade)?
(v) Finally, certain words or symbols are prohibited by law from use as trade-marks. Generally, the prohibitions (codified in the Trade-marks Act) include such things as the coats of arms of the Royal Family, symbols or marks reserved by governmental bodies and public authorities, national flags and symbols, appellations of origin for liquors and alcoholic spirits (eg., champagne), and anything obviously immoral or offensive.
As long as you do not run afoul of any of the above restrictions, then you are free to choose your trade-mark based upon business considerations. Does your trade-mark convey the impression that you are looking for? Is it catchy? Is the trade-mark equally applicable in both the French and English languages? Does it translate well into foreign languages? Will it be equally useful with your present and future products or services?