In Part 1 and Part 2 of this series we offhandedly mentioned that trade-marks might be registered or they might not. If you are in the unregistered group but will want to be registered someday, the mark itself can be important.
Trade-marks only exist with use. On the other hand, registration is not necessary to gain some rights. Unregistered marks, sometimes called “common law marks,” have notable rights on their own. In fact, some of the world’s most famous trade-marks were or are unregistered. Think of brands like “Ford” or “McDonalds.” Each of those existed for many years before registration (“Ford” was not registered in Canada until 1949 although it was first used in 1904).
Sometimes there is no registration only because of finances. Trade-mark priority starts upon first use, not registration, so many owners will delay registration for cash flow reasons or to confirm the product can gain a foothold in the market. But there are sometimes more technical reasons for non-registration. Canada’s Trade-marks Act, which governs registered marks, can get in the way.
For instance there are many words or classes that the Act simply disallows as registered marks. Here are a few:
a) Official government designs or marks that imply a connection to the Royal Family;
b) Certain official symbols or names. This would include flags and symbols of other countries, badges and crests of the Armed Forces or RCMP, or the emblems and names of the Red Cross or United Nations.
c) Subject matter that is “obscene, scandalous or immoral.” Not only would this cover George Carlin’s classic “7 words you can’t say on television” but it could also extend to obscene visuals or racial slurs. This particular category shifts with social standards so it is tough to define rigid rules. “Oomphies” was once denied for being obscene but that was early in the 20th century. It likely wouldn’t raise an eyebrow today other than when people wondered what it meant.
d) Clearly descriptive marks. Since all potato chips are crunchy you couldn’t get exclusive use of “Crunchy” as part of the name. The idea is that trade-marks cannot be used to block other sellers from properly describing the features of their products.
e) Alternatively, deceptively misdescriptive marks are disallowed because they could confuse the consumer.
f) Names or surnames. This is similar to overly descriptive because we don’t want to prevent people from using their name in connection with their business. It can even extend to fictional names. The big exception, though, is if the name has developed a secondary meaning apart from it being a name. “Ford” is a perfect example of this – most people now think of the automobiles made by the company rather than the founder’s name so it has acquired a secondary meaning. It took many years for this to happen, however, which can delay registration.
This is only a partial list of the prohibited marks but it shows that one doesn’t have free rein in choosing a mark.
If your trade-mark falls into one of these categories can you just continue unregistered without problems? Maybe, maybe not. Things like place of origin are protected not only by the Act but also other laws and treaties. You couldn’t just bring out some sparkling wine called “Champagne” without attracting a lot of legal attention from the vintners of the originating region.
All of this shows how important it is to think of the future when picking a name for a product. While registration is not necessary it is usually a goal. And most entrepreneurs, while they hope to achieve it, don’t necessarily recognize how big their mark could be. You wouldn’t want to spend years and piles of money developing a brand name with a great reputation if you couldn’t get the best possible protection against freeloaders later. Remember that the copycats will only come out if/when you are successful. Almost every successful mark has to beat back those infringers.
Think of that when developing a trade-mark before spending big money promoting it. Do some searches and talk to your advisors to make sure it can be locked down as tightly as possible.