We previously mentioned the statutory factors. Now is the time to deal with them in more detail.
Inherent Distinctiveness
The first circumstance to be considered in determining whether trademarks or trade names are confusing is the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known.
Distinctivenes is the essence of and a cardinal requirement of a trademark. Strong marks, like KODAK or other invented words are more inherently distinctive then weak marks such as PACIFIC COFFEE or PREMIUM SODA, either because of common use or being tinged with a geographic or descriptive character.
The extent of protection available to a trademark will vary, other things being equal, on the inherent distinctiveness of the trademark. When a mark is inherently weak, absent acquired distinctiveness, small differences may be enough to distinguish it from other marks.
If other competitors are using trademarks somewhat similar to the trademark in issue, this will be relevant to the distinctiveness of the trademark. Where a trademark consists of words which are common and which are also contained in several other trademarks in use in the same market, it will be less distinctive and entitled to less protection than in a strong mark. However, a new combination of words or designs, each of which is itself common to the trade, may be a distinctive combination when looked at as a whole. Such a trademark does not lie in each of the parts, but in the combination of them. It is the commercial impression produced by the mark as a whole that must be considered.
A mark containing words suggestive of the goods or services offered by the trademark owner will likely be a weak mark. Trademarks composed solely of initials or numbers or a geographic designation will typically be entitled to a small ambit of protection.
If the owner of a trademark allows it to be used as the name of the goods or services in question it may lose its distinctiveness and become generic.
A mark, which is not inherently distinctive, may acquire distinctiveness through extensive use in the marketplace which makes the mark known to purchasers of the goods or services in issue.
More to follow next month.
If you have questions, please contact me at mckeown@gsnh.com
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
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