Opposition Board Considers Effect of Public Domain Use on Trade-mark Distinctiveness

In Fédération Étudiante Collégiale du Québec v Drapeau (2015 TMOB 233), the Trade-marks Opposition Board (Board) refused an application to register a trade-mark consisting of a red square on which is pinned a gold safety pin (the mark).  The application was opposed by Fédération Étudiante Collégiale du Quebec (Fédération), which argued that the mark was not distinctive as it had been used extensively by third parties as a symbol of revolutions, demonstrations and protests.

The Fédération argued that the applicant could not have trade-mark rights in the symbol, and in addition, should not be granted exclusive rights over a symbol that had become part of the public domain.  The applicant argued that the prior use identified by the Fédération was not a use that served to identify the origin of the goods to which the symbol was affixed. In other words, the applicant argued it was the only one to use the symbol as a mark.

The Board found that consumers would associate the mark with the Québec student protests in spring 2012, and not the applicant’s goods.  It found that the notion of “distinctiveness” is a fundamental and essential quality of a trade-mark that goes beyond the probability of confusion between two marks, and can include consideration of public use as other than a mark.