Guidance from the Trademarks Office and its Limitations
After the amended Trademarks Act and the new Trademarks Regulations came into effect on June 17, 2019, many trademark applications have received a new type of objection from the Trademarks Office that has been causing significant uncertainty and delay. The objection is that the applied-for trademark is not inherently distinctive of the Applicant’s associated goods and/or services.
To overcome such an objection, the Applicant must either present successful arguments to overcome the objection or file evidence that the trademark was distinctive in Canada (or specific provinces) as of the filing date of the trademark application. If the application was filed based on proposed use in Canada, then filing evidence of use is not an option. To establish distinctiveness in each and every province and territory in Canada is onerous and difficult to do. Thus, it is typical to first attempt to overcome the objection through written arguments, and if such arguments fail, to consider preparing and providing evidence of use.
The Trademarks Examination Manual provides that the following information should be included in an affidavit of use along with specimens of the trademark as used in relation to the Applicant’s goods/services:
- A statement of the nature of use (as described in section 4 of the Trademarks Act) of the trademark in association with all of the goods or services listed in the application.
- An explanation of the manner of association of the trademark at the time of transfer of property or transfer in the possession of goods.
- An explanation of the manner of use of the trademark in the advertisement of goods or services pursuant to sections 4 and 5 of the Trademarks Act, accompanied by specimens of advertising material.
- Statements which clearly indicate the extent of use of the trademark for each defined territorial area in which the trademark is stated to have become distinctive.
- Information as to the length of time the trademark has been used in Canada in association with the goods or services listed in the application.
Although the general information from the Manual provides a helpful starting point, it is unclear how much evidence is needed to prove that a trademark has acquired distinctiveness prior to the filing date of the application in each individual case.
Our Findings from Applications approved based on Evidence of Use/Distinctiveness
In all of 2020, only 27 of the 20,668 trademarks that were approved and advertised by the Trademarks Office had evidence of use filed that was deemed acceptable for establishing acquired distinctiveness. Only 12 of those 27 trademarks were not territorially restricted to a select number of provinces. In fact, 10 of those 27 trademarks were territorially restricted to only one province. Unfortunately, 2 of those 27 trademark applications were subsequently withdrawn from advertisement on the basis that they were approved in error.
Each case is different and the less inherently distinctive (or the more descriptive) a mark is, the heavier the onus is to provide evidence of acquired distinctiveness. Nevertheless, below are some general suggestions as to the specific types of evidence to collect based on a review of a sample of evidence accepted by the Trademarks Office.
General: The evidence provided must be limited to the relevant period, namely between the claimed date of first use of the mark in Canada and the filing date of the application.
- Exception: If the claimed date of first use of the mark in Canada includes the expression “since at least as early as [date]”, then the relevant period is not limited to that date. Nevertheless, evidence of use dated after the filing date will generally be considered irrelevant or may not be considered at all.
- Although it is helpful to provide more evidence, it does not appear to be strictly necessary to provide evidence of use all the way back to the first year of claimed use.
- However, it appears necessary to include evidence related to the most recent years leading up to the filing date of the application.
Evidence of sales figures in the period before the filing date of the trademark application
- Annual gross revenues will suffice
- The Trademarks Office will accept a breakdown of the sales figures by calendar year.
- The sales figures provided do not have to be exact to the cents; the Trademarks Office has accepted rounding of figures to the nearest $500, $10,000, and even $500,000.
- A breakdown of the sales figures by province/territory is required unless the applicant specifies that it is prepared to restrict the registration of the mark to only one particular province.
- Lack of sales in the less populated Territories of Canada can be supplemented by evidence of the mark being made known via advertisement and promotion (e.g., evidence of website visitors from said Territories).
- Based on the evidence of annual sales figures filed in the applications sampled, the minimum number of years of evidence provided was 2.3 years, the maximum number was 16 years, and the average number of years of evidence provide was 8.5 years.
- The minimum number of pages of evidence filed was 78 pages, the maximum number was 261 pages, and the average number of pages of evidence filed was 150 pages.
- Based on the evidence of annual sales figures filed in the applications sampled, the numbers were significant but also varied greatly:
- (one year): $56.572.75
- (one year): $37,880,500.00
- (one year): $5,583,567.24
- (total): $315,016.96
- (total): $396,839,500.00
- (total): $82,184,938.81
- Notably, for one of the applications sampled, total sales of at least $308,841.85 in each of Alberta, Ontario and Quebec were considered sufficient for establishing acquired distinctiveness, but total sales of $68,666.05 or less in each of British Columbia, Manitoba and Saskatchewan were considered insufficient.
Evidence of advertising expenditures
- Based on the evidence of advertising expenditures filed in the applications sampled, such expenditures need not be as significant as the sales figures provided, and even zero paid advertising may be acceptable if evidence or an explanation of unpaid advertising is provided (e.g., direct visits to customers, social media).
- Volume and value of advertising of the trademark must be broken down per year for each province separately, and the type of advertising should be indicated.
Types of other evidence showing use or display of the mark
- For evidence of use in association with goods, the number of units sold each year in each province should also be provided if possible, or at least the total number of units sold.
- A list of other types of evidence that were found to be acceptable by the Trademarks Office:
- Copies of flyers, pamphlets, brochures, posters, letters, cards, direct mailings, letters.
- Representative invoices evidencing sales in Canada.
- Digital photographs of sampling of goods bearing the trademark.
- Screenshot of applicant’s website during the relevant period.
- Old screenshots can be retrieved using the Wayback Machine.
- Website metrics, e.g., number of visitors from each province in Canada.
- Screenshot of online advertisement, e.g., on Google, social media platforms.
- Social media metrics, e.g., number of “followers” and “likes”, number of visits, “sharing” “retweeting”, “comments” “mentions” on Facebook, Instagram and Twitter.
- Scripts from telemarketing calls and radio/television advertisements.