Under Section 12(1)(b) of the Canadian Trademarks Act, CIPO will reject your application if your name merely describes your product or service, such as “Toronto Car Wash”. You can overcome this objection by proving your brand has acquired distinctiveness over many years of use, or by amending your application to include a unique, highly recognizable logo.
Understanding the “Clearly Descriptive” Objection in Canada
Receiving an Examiner’s Report from the Canadian Intellectual Property Office (CIPO) stating your trademark has been rejected is a frustrating experience. 📝 One of the most common reasons for refusal is that the mark is considered “clearly descriptive” or “deceptively misdescriptive” under Section 12(1)(b) of the Trademarks Act. Essentially, the government believes your chosen name simply states what you do, rather than acting as a unique identifier for your brand.
The logic behind this Canadian law is fairness. CIPO cannot give one business a legal monopoly over common words that competitors need to use to describe their own goods. For example, if you sell apples in British Columbia, you cannot trademark the words “Crisp Red Apples.” It would be unfair to prevent other local farmers from using those everyday descriptive words.
However, an initial rejection is not necessarily the end of the road. 💼 Experienced IP law firms routinely overcome these objections. By presenting detailed legal arguments, showing long-term brand recognition, or modifying the application, it is entirely possible to push a descriptive trademark through to registration.
Step-by-Step Process to Overcome a Section 12(1)(b) Refusal
If you have received an Examiner’s Report citing a descriptive objection, you generally have a strict 6-month deadline to respond. Here is the process most applicants follow to save their trademark.
Step 1: Review the Examiner’s Report Carefully
First, read the exact wording of the CIPO examiner. They will explain why they believe the mark is descriptive. Sometimes, they use dictionary definitions or internet search results to prove that ordinary Canadians view your brand name as a normal descriptive phrase rather than a unique brand.
Step 2: Consult an Intellectual Property Lawyer
Responding to a 12(1)(b) objection is highly technical. 🤝 A lawyer will assess whether the examiner made a mistake (perhaps the word is suggestive rather than clearly descriptive). “Suggestive” marks require imagination to connect the name to the product (like “Netflix” for internet movies), which is legally permissible in Canada.
Step 3: Prove Acquired Distinctiveness
If the mark is indeed descriptive, you can argue that it has acquired distinctiveness (often called secondary meaning) under Section 12(3) of the Act. You must submit massive amounts of evidence-such as years of sales data, heavy advertising expenditures, and consumer surveys-to prove that Canadians immediately recognize this descriptive phrase exclusively as your specific company.
Step 4: Amend to a Design Mark
If you cannot prove acquired distinctiveness, a common workaround is to amend the application. 🖌 If you originally applied for a standard word mark, you might change it to a design mark (a logo). Even if the words are descriptive, a highly unique graphic design or stylized font can make the overall trademark distinctive enough to be registered.
How Much Does it Cost to Respond in Canada?
Navigating an examiner’s refusal will increase the overall cost of your trademark journey. While there are no CIPO fees to submit a response, the legal strategy requires budget planning:
- CIPO Response Fee: $0 CAD. The government does not charge you to reply to an Examiner’s Report.
- Lawyer Fees for Legal Arguments: If your lawyer drafts a detailed legal argument arguing the mark is suggestive, expect fees between $750 and $1,500 CAD.
- Proving Acquired Distinctiveness: Gathering evidence and drafting sworn affidavits to prove long-term use is labour-intensive. Legal fees can range from $2,000 to $5,000+ CAD.
- Filing a New Application: If the mark is hopelessly descriptive and you must start over with a new, stronger name, you will pay the CIPO base fee of $458 CAD again.
Comparing Descriptive vs. Distinctive Trademarks
Choosing a strong name from the start prevents these legal hurdles. 📍 Here is a comparison of trademark strengths in Canada.
| Type of Mark | Definition | Examples & CIPO Outlook |
|---|---|---|
| Clearly Descriptive | Describes the exact feature, location, or quality of the good. | “Cold Beer” or “Calgary Plumbers”. Will be rejected under 12(1)(b). |
| Suggestive | Hints at the product’s function but requires imagination. | “Coppertone” for sunblock. Generally accepted by CIPO. |
| Coined / Fanciful | Made-up words with no dictionary meaning. The strongest type. | “Rolex” or “Kodak”. Easily registered and highly protected. |
How Long Does the Process Take?
Receiving an Examiner’s Report significantly delays your trademark registration. 📅 You are given 6 months to file your response. Once submitted, the CIPO examiner may take another 6 to 12 months to review your arguments. If they accept your response, your trademark moves to the publication phase. If they refuse it again, you may have to appeal to the Federal Court, which can take years.
Frequently Asked Questions (FAQ)
What happens if I ignore the Examiner’s Report?
If you do not submit a formal response to CIPO within the 6-month deadline, your trademark application will go into “default” and will eventually be permanently abandoned. You will lose your filing fees and your spot in line.
Can I just add “Inc.” or “Corp.” to make it distinctive?
No. Adding legal entity identifiers like “Inc.,” “Ltd.,” or “.ca” does not make a descriptive mark distinctive. CIPO ignores these generic additions when evaluating the uniqueness of the trademark.
What is a “deceptively misdescriptive” trademark?
This is a mark that misleads the public about the origin or quality of the product. For example, trying to trademark “Ontario Pure Maple” for a synthetic syrup made entirely in a lab in another country. CIPO will reject this instantly.
Can I use a disclaimer to save my trademark?
Historically, CIPO allowed applicants to “disclaim” the right to the descriptive words while trademarking the rest of the logo. However, legislative changes to the Trademarks Act in recent years have largely removed disclaimers as a tool to overcome Section 12(1)(b) objections.
Is it worth fighting a descriptive refusal?
It depends on your brand equity. If you have used the name across Canada for 15 years and have massive revenue, it is worth paying a law firm to prove acquired distinctiveness. If it is a brand-new startup, it is usually cheaper and faster to rebrand to a coined name.
Leave a Reply