When “use” is not trademark “use”

Law sometimes hinges on subtle distinctions that are not obvious, and can lead to surprising results.  The meaning of the word “use” for trademark purposes, for example.

A key principle of trademark law is that a business must actually “use” its trademark to keep its trademark registration alive, or to enforce its trademark rights against others.

But the legal concept of “use” for trademark purposes is narrower than most would suspect, and can result in a surprising loss of trademark rights for a business.

For example, a trademark on the side of a building, or on a business card, or on letterhead is not “use”.

A couple of recent cases in the Federal Court and the Federal Court of Appeal remind us of this.

It is common to register a corporate name as a trademark.  That’s fine if it is actually used as a trademark – but mere use as a corporate name is not enough to amount to trademark use.

Similarly, mere use of the trademark within an email or other text is not enough if it looks like the rest of the text.  It must somehow  look different than the rest of the text.

For example, if your company name is Abcd Widgets Inc, and your trademark is ABCD, the use of Abcd Widgets Inc. is not use of the trademark.  ABCD must be used independently.  And in text, using abcd is not use, but using ABCD may be, as it looks different than the surrounding text (unless, of course, the rest is in all caps as well.)

Cross posted to Slaw

Trade-marks guide updated

 I have updated and split into 2 the trade-marks guide I created for my clients. 

trade-marks-guide-part-1-registering-a-trade-mark summarizes what one should know before selecting and registering a trade-mark, and the advantages of registering. 

trade-marks-guide-part-2-after-registration summarizes how to properly use and care for a trade-mark after it is registered.

Trade-marks not allowed to be merely descriptive

For the London Free Press – March 23, 2009

Read this on Canoe

People often think of adopting trade-marks that describe their product or service. But that results in a weak trade-mark and is not allowed under the Trade-marks Act.

A trade-mark is used to distinguish one company’s products or services from those of another. To achieve that, the Act doesn’t allow registration of a trade-mark that describes the character or quality of the product or service or its place of origin. For example, McDonald’s can register a trade-mark such as “Big Mac”, but can’t register “double cheeseburger.”

Trade-marks that pass the threshold in the Act, but are still somewhat descriptive, are considered weak marks as they don’t do a good job of distinguishing the products of one business from another.

The rule against descriptive trade-marks is illustrated in the recent Federal Court of Appeal decision of Shell Canada Ltd. vs. P.T. Sari Incofood Corp. In this case, Shell challenged the registration of the proposed trade-mark, “JAVACAFE.”

The Indonesian company P.T. Sari wanted to use JAVACAFE in connection with its coffee-related wares, including coffee powder, cooked coffee beans, instant coffee, freeze-dried coffee and granular coffee.

In analyzing JAVACAFE, the Court of Appeal separated the proposed trade-mark into “java” and “cafe”.

It agreed with Shell that “cafe” means “coffee” in French, or that the average French-speaking Canadian would immediately assign that meaning when the word appeared in a trade-mark associated with coffee products.

In considering “java” the court found the word to be defined in the French language as a popular dance, but that it was also understood to be an island known for its coffee production.

To determine whether a proposed trade-mark is too descriptive or whether consumers would be confused by the mark, a court will consider the dictionary meaning of the words. Courts will also consider other evidence such as consumer surveys or even the number of other trade-marks that contain the same word or words.

In conclusion, the Court of Appeal stated that “the trade-mark JAVACAFE is not distinctive of P.T. Sari’s coffee products from the coffee products of others given that it is clearly descriptive of the character, quality or place of origin of the wares with which its association is opposed.”

Since JAVACAFE did not meet the criteria in French, it was not necessary to consider whether the proposed mark was clearly descriptive in the English language.

The ruling on JAVACAFE also highlights the importance of considering a proposed trade-mark’s meaning in different languages.

In Canada, this consideration is limited to English and French. However, for people who wish to use a trade-mark internationally — either now or in the future — it is prudent to consider the mark’s meaning in other languages because many nations have similar trademark law.

This consideration is especially important given today’s global economy and the prevalence of international sales via the Internet.

So when considering what trade-mark to adopt for your products, avoid weak, descriptive marks. Strong, distinctive trade-marks must be memorable, not descriptive.