Most trademark applicants understand the two big hurdles: their mark cannot be confusingly similar to existing trademarks, and it must be distinctive enough to function as a brand identifier. These objections account for the majority of Examiner's Reports. But trademark examination risks extend well beyond confusion and distinctiveness. Canadian trademark law contains numerous grounds for refusal that catch applicants off guard, leading to unexpected objections, costly delays, or having a trademark application rejected entirely.
Understanding these lesser-known obstacles before you file can save significant time and frustration. This guide covers the trademark refusal grounds that do not get as much attention but can be just as fatal to your application.
Prohibited Marks Under the Trademarks Act
Section 9 of Canada's Trademarks Act sets out a list of marks that no one can adopt as a trademark without specific authorization. These prohibited marks include symbols, words, and designs that carry special significance or are reserved for particular entities.
Royal and Government Symbols
The Canadian flag, provincial and territorial flags, royal crowns, and other official government symbols cannot be registered as trademarks. This prohibition extends to anything that would suggest a connection to the Crown, the federal government, or provincial governments when no such connection exists.
The same restriction applies to coats of arms, crests, and emblems of the Royal Family, the Governor General, and provincial lieutenant governors. Using these symbols without authorization is not just a trademark issue; it can constitute a criminal offence.
International Organizations and Foreign States
Flags, armorial bearings, and emblems of foreign countries receive similar protection. The same applies to official symbols of international organizations like the United Nations, the Red Cross, and the Olympic movement. These protections stem from Canada's obligations under international treaties.
Attempting to register a mark that incorporates the Olympic rings, for instance, will likely result in refusal.
Scandalous, Obscene, or Immoral Marks
The Trademarks Act also prohibits marks that are scandalous, obscene, or immoral. While Canadian examiners apply this provision relatively narrowly compared to some other jurisdictions, marks containing profanity, explicit sexual content, or highly offensive imagery will face objections.
Context matters. A word that might be acceptable in one context could be objectionable when used as a trademark for certain goods or services. Examiners consider the overall impression the mark would create in the marketplace.
Official Marks: A Uniquely Canadian Challenge
One of the most surprising trademark examination risks for applicants unfamiliar with Canadian law involves official marks. Under Section 9(1)(n)(iii) of the Trademarks Act, public authorities in Canada can request protection for their official marks without going through the standard registration process.
What Makes Official Marks Different
Official marks appear in CIPO's database but are not registered trademarks. They receive protection through a simple publication process, without examination for distinctiveness or conflicts. Once published, an official mark blocks anyone else from adopting a confusingly similar trademark for any goods or services.
This breadth of protection creates significant risk for applicants. A standard trademark search might reveal an official mark that you cannot work around, even if your goods and services bear no relationship to those of the public authority.
Who Can Obtain Official Marks
Public authorities eligible for official marks include:
Federal, provincial, and municipal governments and their agencies
Crown corporations
Universities and colleges
Hospitals and health authorities
Some professional regulatory bodies
The criteria for what constitutes a "public authority" have been subject to litigation, and CIPO has tightened requirements in recent years. However, thousands of official marks already exist in the database, and they present genuine obstacles for many applicants.
Searching for Official Marks
When conducting a trademark search, checking for official marks is essential. They appear in CIPO's database with the designation "O.M." rather than "TMA" (trademark application) or "TM" (registered trademark). A comprehensive search must include official marks, as a conflict here can be just as fatal as a conflict with a registered trademark.
Geographic Terms and Misdescription
Trademarks that consist primarily of a geographic name face significant obstacles. Section 12(1)(b) of the Trademarks Act prohibits registration of marks that are "clearly descriptive or deceptively misdescriptive" of the place of origin of the goods or services.
When Geography Becomes a Problem
If your business is located in Vancouver and you want to trademark "Vancouver Coffee Company" for coffee services, you face a descriptiveness problem. The geographic term describes where your services originate.
Conversely, if your business is in Toronto but you want to use "Vancouver Coffee Company," you face a misdescriptiveness problem. The mark falsely suggests your coffee comes from Vancouver.
Both scenarios present trademark refusal grounds. The first is clearly descriptive of the place of origin; the second is deceptively misdescriptive.
Exceptions and Workarounds
Geographic terms are not automatically fatal. If a geographic term has become so associated with your brand through extensive use that consumers recognize it as your trademark, registration may be possible through acquired distinctiveness, though proving this requires substantial evidence. If the geographic reference is clearly fanciful or arbitrary in context, it may not be considered descriptive at all. "Amazon" for an online retailer does not describe the place of origin of the goods. Combining a geographic term with other distinctive elements can also sometimes produce a registrable mark.
Functional Features and Utilitarian Designs
Trademark law protects brand identifiers, not functional product features. A mark generally cannot be registered if it consists exclusively of features that are utilitarian in nature, dictated by the function of the goods, or essential to the goods' use or purpose. For example, the shape of a tool handle designed for ergonomic grip serves a utilitarian function and typically cannot receive trademark protection.
This principle also applies to distinguishing guises (what other countries call trade dress), which protect the appearance of products or packaging when that appearance identifies the source. Applications for distinguishing guises face heightened scrutiny: you must demonstrate that the shape or configuration has become distinctive through use, and that the features are not primarily functional.
Names and Surnames
Section 12(1)(a) of the Trademarks Act prohibits registration of marks that are "primarily merely the name or surname of an individual." This restriction exists because trademark law does not want to give one person a monopoly on a common name.
When Names Face Objections
A trademark consisting only of a surname like "McDonald" or "Smith" will typically face a CIPO rejection under this provision. The examiner considers whether the public would perceive the mark as primarily a surname.
Several factors influence this analysis, including the commonness of the surname, how it is presented (plain text versus stylized or combined with other elements), and whether the word has a well-known dictionary meaning beyond being a surname. "Baker" is both a surname and an occupation; "Rose" is both a surname and a flower.
The main path to registering a surname-based mark involves demonstrating acquired distinctiveness through extensive use and advertising. Combining the surname with other distinctive elements, such as a first name, logo, or additional words, can also produce a registrable composite mark.
Marks That Suggest a Connection to Living Individuals
The Trademarks Act includes provisions that may restrict the adoption of marks involving the portrait or signature of a living individual without their consent. These trademark refusal grounds protect personal rights and help prevent unauthorized exploitation of someone's identity.
If your proposed trademark includes a person's name, portrait, or signature, you generally need their written consent. This applies regardless of whether the person is famous. Even marks that do not explicitly name someone can face objections if they create a false suggestion of endorsement or connection.
Similar protections can extend to recently deceased individuals. Using the name, portrait, or signature of someone who has recently died may require consent from their estate, depending on the circumstances.
Deceptive Marks and False Suggestions of Quality
Beyond misdescriptive geographic terms, the Trademarks Act prohibits marks that are likely to deceive the public in other ways. A mark cannot falsely suggest that goods or services have a particular character, quality, or composition that they do not. Similarly, marks that suggest government approval, certification, or endorsement when none exists may face objection. Using terms like "certified," "official," or "approved" generally requires backing up those claims.
Plant Varieties and Geographical Indications
The Trademarks Act also prohibits adopting a trademark that consists of the denomination of a protected plant variety. Canada maintains a registry of protected plant varieties, and their official names cannot be trademarked.
Similarly, geographical indications like "Champagne," "Bordeaux," or "Scotch" receive special protection. Using these terms for wines or spirits not originating from the protected region constitutes grounds for refusal, reflecting Canada's obligations under international trade agreements.
Language and Formalities
While not substantive grounds for refusal, several technical requirements can result in objections during examination. Canada is officially bilingual, so any descriptive or laudatory terms will be assessed for distinctiveness in both English and French. A word that is distinctive in one language might be descriptive in the other.
Applications may also face objections for technical deficiencies such as insufficient descriptions of goods or services, improper classification, or incomplete applicant information. These objections are usually straightforward to resolve but still cause delays.
Responding to Unexpected Objections
Receiving an Examiner's Report citing one of these less common trademark refusal grounds can be disorienting. Understanding what an Examiner's Report means is the first step toward responding effectively.
When faced with an unexpected objection, consider whether the objection is valid (examiners sometimes make errors), whether you can amend your application to resolve the issue, or whether evidence of acquired distinctiveness or consent from relevant parties could overcome the refusal. In some cases, particularly with prohibited marks or official mark conflicts, the objection may be insurmountable, and knowing when to abandon saves further expense.
You typically have six months to respond to an Examiner's Report. Failing to respond results in your application being deemed abandoned, so timely action is important.
Avoiding Trademark Examination Risks Before You File
The best way to handle these objections is to avoid them in the first place. A thorough pre-filing review can identify potential problems before you invest time and government fees.
A proper trademark search examines more than just registered trademarks. It should also cover official marks, pending applications, common law marks, and potentially conflicting business names. Choosing a strong, distinctive trademark that avoids prohibited categories reduces examination risk substantially. Understanding the fundamentals of trademark law in Canada helps you make informed branding decisions from the start.
Many of these risks are not obvious to business owners unfamiliar with the Trademarks Act's specific provisions. A trademark professional can spot potential issues that might not surface in a basic search or self-assessment.
Protecting Your Application Investment
Filing a trademark application involves government fees that are non-refundable even if your application is ultimately refused. Beyond the financial investment, months of waiting can be lost if an application fails due to an avoidable objection.
Understanding the full range of trademark examination risks, not just confusion and distinctiveness, positions your application for success. These lesser-known grounds for refusal may be less common, but they are no less capable of derailing an application.
Navigating trademark examination requires knowledge of rules that rarely make it into basic guides and online resources. From prohibited marks and official marks to geographic restrictions, functionality objections, and surname issues, the potential grounds for refusal extend well beyond what most applicants expect. Identifying these risks before you file saves both the non-refundable government fees and months of processing time that would otherwise be lost to avoidable objections. If you are preparing to file a trademark application and want to minimize the risk of surprises during examination, professional guidance can make a real difference. Contact Clearview to discuss your application and get advice tailored to your situation.