Trade-marks Clearly Descriptive When Sounded - Should This Issue Resonate With Brand Owners & Practitioners?

Originally published December 10, 2004 issue of The Lawyers Weekly

Recent Canadian trade-mark case law presents new challenges to both owners and practitioners. In an effort to emphasize certain characteristics or qualities of their products or services, brand owners often incorporate descriptive words in their trade-marks. As a result, obtaining a registration for such trade-marks is often difficult since the Canadian Trade-marks Office will object to the registration of a trade-mark which comprises words or designs that are descriptive. Specifically, section 12(1)(b) of the Trade-Marks Act (the "Act") provides that a trade-mark is registrable if it is not, "whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive" of the wares or services with which it is associated.