Is My Trade-Mark Registrable?
Often I get questions from clients like: “My proposed trade-mark is similar to an existing trade-mark. Would I be able to register it?”
An analysis of the registrability of a proposed trade-mark is a complicated one, and involves a number of factors.
Usually, in trade-mark applications, where a proposed mark is similar to an existing mark, and the wares and services of each owner are similar, the proposed trade-mark will be considered “confusingly similar” with the registered trade-mark, and the Examiner, who acts on behalf of the Registrar of Trade-Marks, will object to the application and not allow the trade-mark to be registered.
However, there are certain circumstances where the application may nevertheless proceed. One such exception may arise where the register of trade-marks contains several trade-marks that are also similar to both the proposed trade-mark and the registered trade-mark. In other words, the register is “diluted”. In order for the Examiner to object to an application based on “confusingly similar” trade-marks, the registered trade-mark in question must have sufficient inherent distinctiveness to stand up against the proposed application. In other words, it must also be distinguished from the other trade-marks on the register. Where it is not, the applicant’s trade-mark can not be said to be confusingly similar to the registered trade-mark since it does not suggest that the applicant’s wares or services be provided by the registered trade-mark’s owner.
As an example, take the recent case of Reynolds Consumer Products Inc. (“RCP”) v. P.R.S. Mediterranean Ltd. (“PRS”), 2012 FC 824 (CanLII). RCP registered its GEOWEB trade-mark first, and later PRS proceeded to register its trademark, NEOWEB. Both companies sell similar goods. In the Reynolds case, RCP attempted to seek judicial review of the Registrar’s decision to register NEOWEB on the grounds that it was confusingly similar to GEOWEB. The Court denied the relief, stating that each of the two trade-marks lacked distinction as there already existed numerous other trade-marks with the suffix WEB, or the prefix GEO or NEO. In other words, both trade-marks could co-exist on the register, along with all the other similar trade-marks, as none of them had any strong distinctive elements.
Choosing a strong and distinctive trade-mark is important for the enforcement of your rights but also for the benefits it will have in the marketplace. Contact me today to discuss more.