4. Some Trade-marks are not Registrable.

Not all trade-marks are registrable. Among the trade-marks that are not registrable under the Canadian Trade-marks Act are:

• trade-marks that are clearly descriptive of the character or quality of the products or services,

• trade-marks that are deceptively misdescriptive of the character or quality of the products or services,

• trade-marks that are clearly descriptive or deceptively misdescriptive of the origin of the products or services,

• trade-marks that are the name of the products or services, and

• trade-marks that are confusing with a registered trade-mark.

There are a number of tests which have been developed by the courts which are employed by the Trade-marks Office in determining whether a trade-mark is registrable. In general terms, however, where an application for registration of a trade-mark falls within one of these categories, the trade-mark will not be registrable.

5. International Classifications Don’t Apply.

Products and services which are used in association with a trade-mark must be described in ordinary commercial terms. In many countries such as the United States this is done by using International Trade-mark Classes. The International Trade-mark Classes are categorized into 45 classes, Classes 1-34 relating to products and Classes 35-45 to services. Canada does not use this system and therefore trade-marks must be described in ordinary commercial terms for Canadian filing purposes.

For example, Class 32 refers to "light beverages" which are enumerated as: "beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages". For Canadian filing purposes, the wares "non-alcoholic beverages" require further specification, for example carbonated drinks, colas, energy drinks, sports drinks, drinking water, fruit-based soft drinks, fruit juices, hot chocolate, milk, non-dairy soy, coffee or tea.

6. Copyright may reside in Trade-marks and must be Acquired.

Where a trade-mark is in the form of a design, the design will be subject to copyright protection, as well as trade-mark protection. If a trade-mark owner retains a graphic artist to develop and design a trade-mark, the trade-mark owner should obtain all rights to the design, including the ability to make changes to the design. This is generally done by means of a simple contract known as an "Assignment".

In Canada, copyright need not be registered as rights to the design arise at the time of creation, which provides the copyright owner with remedies for copyright infringement at common law. These remedies are additional to the remedies that the trade-mark owner will have under the Canadian Trade-marks Act.

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