NID (not inherently distinctive). Could disclaimers save us?
Canada brought several amendments to the Act and Rules on June 17, 2019. One of those major amendments was a new basis of refusal in Examination or non-registrability on the basis that the mark is “not inherently distinctive” or NID as it is referred-to at the Trademarks Office. This rejection is slightly different from descriptiveness. While a descriptive trademark is also automatically not inherently distinctive, the reverse is not true. There has been a flurry of further examination reports on previously examined applications raising this new basis of refusal, sometimes with or without a descriptiveness rejection, essentially stating that research has disclosed that the mark is made up of terms that are in common usage in the industry and granting rights to the Applicant in the mark would deprive the relevant industry from necessary language. In my view, there is a connection to the Canadian Office discontinuing its disclaimer practice.
A disclaimer can be compared to a limited descriptiveness rejection, where one or more words in a trademark are “disclaimed apart from the trademark” by way of putting that statement in the application. This allowed trademarks that contained descriptive language to proceed to registration with a clear delineation of rights indicating that the owner will not be able to enforce rights in a particular descriptive word. A well-known example would be the 1999 registration for STARBUCKS COFFEE, (REG. NO. TMA507052) wherein the word COFFEE is the subject of a disclaimer.
Such practice is common before international trademarks offices. This practice was discontinued in Canada by way of a practice notice dated August 17, 2007, which stated “Effective immediately, the Registrar will generally no longer require an applicant for registration of a trademark to enter disclaimers pursuant Section 35 of the Trade-marks Act. Voluntary disclaimers will continue to be accepted.” From my understanding, this was not based on any kind of court decision or other, it was merely a in internal decision by then Director Doug Kuntz to streamline the examination process. I always felt that this was a mistake, as disclaimers often brought clarity of rights to trademark registrations.
As a former pre-2007 Trademarks Examiner myself, I remembered I was told in my Examination Basic Training that it was also possible to enter “double disclaimers”, which is a situation where both portions of a trademark are descriptive on their own, but the there is some disunity in the combination, thus the pairing of the two contains inherent distinctiveness. A very good example of this is the 1983 registration for the trademark PIZZA PIZZA, (REG. NO. TMA278516), where the word PIZZA is disclaimed, allowed to be registered on the basis that it is an awkward grammatical construction which is no part of normally spoken English. Thus, granting a registration for the repetition of the word PIZZA with a disclaimer, did not prevent anyone from using the word PIZZA in their trademark. This was a common practice in the Trademarks Office pre-2007. As stated in section IV.9.4.3 entitled “Disclaimer — All Elements of Trade-mark” of my 2001 archived copy of the Trademarks Examination Manual, it is stated: “Where a disclaimer is applied separately and independently to the different parts comprising a trade-mark there must be some distinctiveness in the combination of the words such that the mark, even with the disclaimers, is still registrable.”
In my view, disclaimers could be brought back as a tool to deal with the various NID rejections being received in numerous applications that are presently stuck in Examination, as disclaimers could be provided to clearly delineate the rights of the owner. There are still disclaimer provisions in the Act, and the online trademark application form still has a field for it. Applicants and Agents would just have to use them, argue for them, and Examiners should accept them, since the Registrar should, in my view, be in the business of granting registrations, not blocking them.