Can Hallmark be a trademark for real estate?

The Federal Court in Canada has issued a decision regarding the option for registration of descriptive and low-distinctive signs.

In the case at hand, a trademark application for HALLMARK was filed that covers real estate services.

Against this application an opposition arises based, among others, on a claim for descriptiveness and non-distinctiveness of the sign. In English HALLMARK means a distinctive characteristic of something or someone related to excellence. The word is used for indication of gold, silver, etc. quality characteristics. Based on this the opponent claimed that the mark applied for has a laudatory meaning.

The Patent Office disagreed and dismissed the opposition. According to the Office descriptiveness of a term requires a “clear” meaning related to the goods and services mentioned in the trademark application.

Although the word Hallmark has a laudatory characteristic it does not relate directly to the real estate business. In regard to the non-distinctiveness, the opponent failed to provide any evidence that the sign has been commonly used in Canada for respecting services.

In the appeal, the Court upheld this decision stating that descriptiveness requires a clear connection with the goods and services in the application. Only abstract or associate meaning is not enough in order for this claim to be successful. The fact that one word is a laudatory term does not mean automatically that it cannot be a protected trademark as remains the case with suggestive trademarks that has an associative meaning which requires intellectual efforts from the public in order the connection with the goods and services to be discovered.

Source:  John McKeown, Goldman Sloan Nash & Haber LLP

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