Think back to all the time and energy you put into developing, designing and registering your highly distinctive trade-mark. Your hard work is paying off and your product is now known internationally. In fact, your mark is so successful that it is beginning to take on a life its own. Your mark is now a part of common parlance and people are using your mark as a noun or verb and to describe an entire category of related products and services beyond your initial registration. As you’re basking in the glory of your creative genius, a letter slips through the letterbox. A third-party has filed with the Federal Court of Canada to have your trade-mark expunged based on a lack of distinctiveness. How did this happen?
Section 18 of the Trade-marks Act permits an interested third-party to challenge to the validity of a trade-mark based on a lacking degree of distinctiveness. While at first glance it may appear that having your trade-mark take on new meaning beyond the products it is normally associated with might be a good thing, this can actually cause way more harm than good. In its purest form, a trade-mark is meant to signify a distinct point of origin. In other words, when I buy a Big Mac, a registered trade-mark since 1972, I can be 100% certain that it’s coming from McDonald’s Restaurant. If, on the other hand, double-decker hamburgers in general began to be known colloquially as Big Macs, preservation of the registered trade-mark would depend on McDonald’s staunchly asserting its rights. Google recently found itself in exactly that position as it successfully defended the ongoing distinctive character of its trade-mark in a U.S. Court of Appeal decision.
This is why you hear stories about big companies like Warner Brothers enforcing their rights against seemingly innocent micro-breweries. They don’t have a choice. If a trade-mark loses its distinctive character, the registration will subsequently lose it validity.
Consider the following, now-defunct trade-marks:
- “Trampoline” was actually the trade-mark for a device consisting of a piece of taut, strong fabric stretched over a steel frame using many coiled springs.
- “Escalator” was actually the trade-mark for vertical transportation in the form of a moving staircase.
- “Aspirin” remains the registered trade-mark for Acetylsalicylic Acid in over 80 countries, including Canada, but Bayer, the German company that owns the mark, lost the exclusive rights to the name in the United States way back in 1921.
This is all to say that when you are granted a registered trade-mark you still need to protect its distinctive character. Periodic monitoring of your marketplace for improper use or the appearance of similar marks is highly recommended, as the loss of distinctiveness can be subtle, like erosion over time. Like any valuable property, ongoing maintenance will ensure the value of your mark and registration is maintained and grows.
For those out there that read this article and decide to ignore its advice, at least you’ll understand why you’re drying your tears on a Kleenex® and not a “Sanitary Facial Tissue” when your trade-mark no longer provides the protection it once did, or even worse, your registration is expunged.