Distinctiveness is the concept the whole Act turns on. It decides Part A registrability under section 15(1)(e) and 15(2), Part B registrability under section 16, and whether a registration survives a later challenge under sections 51 and 52. Section 17 of the Trade Marks Act (Chapter 385) defines it.
Section 17(1) — adapted to distinguish
A trade mark is not distinctive of the goods of a person unless it is adapted to distinguish goods with which that person is or may be connected in the course of trade from goods in respect of which no such connexion subsists — either generally, or, where the mark is registered or sought to be registered subject to conditions or limitations, subject to those conditions or limitations.
Three things follow from the wording:
- The comparison is your goods against everyone else’s. The question is not whether the mark is attractive, memorable or original, but whether it performs the job of separating source.
- The connexion may be one that “may be” established. A mark can be distinctive of goods you have not yet sold.
- Distinctiveness is judged against the conditions and limitations proposed. A mark that is not distinctive at large may be distinctive when limited to a colour, a mode of use, or a defined area — which is why limitations are so often the price of registration.
Section 17(2) — the two limbs
(a) the trade mark is inherently adapted so to distinguish; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish.
| Inherent (s 17(2)(a)) | Acquired (s 17(2)(b)) | |
|---|---|---|
| Question asked | Is the mark, of its nature, apt to distinguish? | Has the mark, in fact, come to distinguish? |
| Assessed by | The meaning of the mark and the needs of other honest traders | Evidence of actual use and market recognition |
| Strongest case | Invented words; arbitrary devices | Long, exclusive, well-advertised use |
| Weakest case | Descriptions, surnames, place names, matter common to the trade | Short use; use alongside competitors using the same word |
| Evidence needed | Usually none — argument on the face of the mark | Sales, advertising, duration, geographic spread, trade statements |
The words are “the extent to which”, not “whether”. A mark with some inherent capacity needs less evidence of use; a mark with almost none needs a great deal. That sliding scale is why a mildly suggestive word can reach Part A on modest evidence under section 15(2), while a plainly descriptive word may not get there on any evidence short of overwhelming.
What the evidence looks like
- Duration and continuity of use — dated first-use documents, and evidence that use has not been interrupted.
- Sales volumes and turnover under the mark, broken down by year and by province.
- Advertising and promotion — spend by year, with samples: newspaper, radio, television, signage, packaging, sponsorships.
- Geographic spread — the wider the trading footprint across the country, the stronger the claim.
- Trade evidence — statements from distributors, wholesalers, retailers and industry associations that in the trade the mark means the applicant.
- Third party recognition — media references, awards, unsolicited use of the mark to refer to the applicant.
- Exclusivity — evidence that competitors do not use the word, or use different words for the same thing.
Section 57 confirms that in any action or proceeding relating to a trade mark, evidence of the usages of the trade concerned, and of any relevant mark, trade name or get-up legitimately used by others, is admissible. Distinctiveness is a question about the market, and market evidence is the way it is answered.
Section 17(3) — use by someone else, counted as yours
(a) an application has been made by a person; and (b) before the date of the application the mark was used by another person under the control of, and with the consent and authority of, the applicant; and (c) an application has been made by both for that person’s registration as a registered user; and (d) the Registrar is satisfied that person is entitled to be registered as a registered user immediately after registration of the mark,
the Registrar may treat use by that other person as equivalent to use by the applicant for the purpose of deciding whether the mark is distinctive of the applicant’s goods.
This matters for group companies, franchisors and importers. A proprietor whose mark has only ever been used in the country by a local distributor can still rely on that use — but only if the four conditions are met, and in particular only if the use was under the applicant’s control and a registered user application accompanies the mark. The same logic runs through section 30, under which use of an associated mark, or of the mark with additions or alterations not substantially affecting its identity, may be accepted as the required use.
Section 18 — colour
(1) A trade mark may be limited, in whole or in part, to one or more colours, and in that case the fact that it is so limited shall be taken into consideration in determining whether the mark is distinctive.
(2) So far as a trade mark is registered without limitation as to colour, it shall be deemed to be registered for all colours.
Claiming colour can help you get registered — the particular colour combination may supply the distinctiveness the mark otherwise lacks. But it narrows the registration: a competitor using the same device in a different colour scheme may fall outside it.
Registering without a colour limitation is the wider right — all colours — but it means the mark must be distinctive in black and white, on its shape and wording alone. Where colour is genuinely part of the brand, the usual answer is two applications, or a series registration under section 31, which expressly allows marks differing only in colour to be registered as a series in one registration.
Distinctiveness can be lost
It is not a once-and-for-all finding. Under section 51 a Part A mark may still be removed after three years if it is proved not distinctive at the commencement of the proceedings; under section 52(c) the same is an exception to conclusive validity after ten years. And under section 47, a word that becomes the name or description of an article or substance may be treated as wrongly remaining on the Register. Consistent use of the mark as a mark, alongside the generic name of the product, is what preserves it.
Sources
- Trade Marks Act (Chapter 385) — ss 15–18, 30, 31, 47, 51, 52, 57, 64
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.