Barristers and Solicitors
Patent and Trademark Agents

WHEN IS A TRADEMARK NOT A TRADEMARK?

In law, a trademark can be defined as "any means used to distinguish the goods and services of one business from others in the marketplace".  In other words, trademarks enable consumers to recognize goods or services as originating from a particular business. This is often referred to as the "source theory" in trademark law.

Typically, trademarks are comprised of words, graphic designs and colours or some combination of these elements. Trademarks may also include melodies, unique packaging and fragrances that don't serve any functional purpose for the associated product or service.

However, context is important and sometimes a mark is not a trademark. For instance,

  1. a trademark may be used by a third party without being used as a trademark; and
  2. some marks may not be capable of becoming a trademark in certain circumstances.

"Fair Use" of Trademarks

The concept of "fair use" or "fair dealing" is well-known in the context of copyright law. Although less familiar, there is a similar concept in trademark law which recognizes that the use of another party's trademark may be deemed "fair" in certain circumstances.

In the context of trademarks, "fair use" generally applies where the trademark is used in a descriptive sense and not as a trademark to indicate the source of the product or service. Such use does not constitute trademark infringement or otherwise diminish the trademark owner's exclusive rights in the trademark.

For trademarks that are comprised of common words with a descriptive meaning, fair use permits third parties to continue to use those common words in their descriptive sense. Fair use also permits third parties to use a trademark to refer to the genuine branded goods and services of the trademark owner. For example, under fair use:

  1. a third party retailer may use a trademark to identify genuine branded goods offered for sale in their store;
  2. a third party manufacturer may use a trademark to identify genuine branded goods that are technically compatible with their own goods; and
  3. a third party business may use a trademark with geographic significance to identify their business location where it would be commercially unreasonable to do otherwise (ie. a retail store located inside a shopping centre should be able to identify its location by referring to the trademark for the shopping centre).

To qualify as "fair use", the third party must use the trademark accurately, in good faith and only to the extent necessary. The third party must also take care to ensure that the manner in which they use the trademark does not suggest any endorsement by the trademark owner. In other words, "fair use" of a trademark does not seek to trade on the value of the reputation or goodwill in the trademark. It is merely use of the trademark as a term of reference.

 

Mark Cannot Serve as Trademark

In some circumstances, a mark simply cannot serve to identify goods and services as originating from a particular business. For obvious reasons, this limitation most commonly applies to common words with descriptive meaning. While the word "apple" can serve a valid trademark for computers, it is incapable of serving as a trademark for apples.

This limitation also prevents the primarily functional or aesthetic features of a product or its packaging from acquiring trademark status and protection on the grounds that a monopoly in such features would constitute an unfair restraint on trade and inhibit legitimate competition. This is often referred to as the "functionality doctrine" in trademark law and has been relied upon to deny trademark protection to the patterns on dinnerware and the shape of an electric razor.

Finally, this limitation may also apply to marks famously adopted by and identified with a non-commercial entity such as a political group. This limitation is reflected in a recent decision of the opposition board which refused an application to register a design mark comprised of a red square held by a golden safety pin:

The applicant sought to register the mark for use in association with posters, postcards and a variety of clothing products. However, the mark is a symbol of the 2012 student movement in Quebec which mobilized to protest against a proposed increase of university tuition fees.  One of the student groups that participated in the movement opposed the application. In these circumstances, the opposition was successful on the ground that Canadian consumers associate the mark with the student movement and it could not effectively serve to identify the applicant as the source of the associated goods.

In the end, the applicant may continue to sell goods bearing the trademark, but does not have the exclusive right to do so since the mark cannot serve as a trademark or source identifier.

 

Conclusion

In sum, where the use of a mark does not enable consumers to recognize goods or services as originating from a particular business, it may not constitute use of the mark as a trademark. In such circumstances, there may be no trademark infringement or simply no trademark at all. To determine when a mark is being used as a trademark, the context must be carefully assessed.