What is Acquired Distinctiveness?

An objection to a trademark as being primarily merely a name (Section 12(1)(a) of the Trademarks Act) or as being clearly descriptive or deceptively misdescriptive (Section 12(1)(b) of the Trademarks Act) may be overcome if the Applicant can show that the trademark was distinctive as of the dating of filing the trademark application (Section 12(3) of the Trademarks Act).

Acquired Distinctiveness

Acquired distinctiveness means that, despite the Examiner's objection, consumers do recognize the trademark as an indicator of a particular source of goods and/or services. Relying on Section 12(3) requires providing CIPO with substantial evidence of use of the trademark across a province and/or across Canada.

This evidence includes for example:
- ads showing your trademark & information on circulation of the publication
- website statistics of # of visits & location of visitors
- social media pages, # of followers & their location
- annual marketing/advertising spending
- number of customers & annual revenue

Whether a submission of acquired distinctiveness is successful depends largely on the quality of the evidence submitted and the subjective judgement of the Examiner.

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The above content is for informational purposes only and is not legal or professional advice.