Descriptiveness and Terms Such as .com, .ca, .fr, .uk & .us
Publication Date: 1999-09-01
Trademarks consisting of or containing terms such as: .com, .ca, .fr, .uk & .us are examined for any clearly descriptive or deceptively misdescriptive meanings, in English or French, as applied to the character or quality, place of origin, conditions of, or persons employed in the production of the associated goods or the performance of the services.
The Office considers these terms to mean:
- .com — Commercial entity
- .ca — Canada
- .fr — France
- .uk — United Kingdom
- .us — United States
A trademark that consists of or contains one of these terms is considered unregistrable pursuant to paragraph 12(1)(b) of the Trade-marks Act, if the trademark when considered in its totality, as a matter of first impression in association with the goods and/or services is clearly descriptive or deceptively misdescriptive. Therefore, the addition of one of these terms to a clearly descriptive mark will not make it registrable.
In deciding whether a trademark is clearly descriptive or deceptively misdescriptive, it must be determined what first impression the mark would create upon the everyday user or purchaser of the goods and/or services. (Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25 and Mitel Corporation v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202.
When disclaimer required
Where a trademark in its totality is registrable and contains one of the aforementioned terms, a disclaimer of the term is required if the term when considered in association with the goods and/or services, forms a portion that is not independently registrable within the meaning of paragraph 12(1)(b) of the Act.
If the term is deceptively misdescriptive and forms a significant part of the trademark, the mark in its totality is deceptively misdescriptive and therefore unregistrable having regard to paragraph 12(1)(b) of the Act. (Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103).
- Date modified: