By Julius Melnitzer | January 8, 2026
The NID objection is seen as a unique barrier to doing business in Canada – Elliott Gold
Since the 2019 wholesale amendments to Canada’s Trademarks Act introduced the “not inherently distinctive” (NID) objection to trademark (TM) registration, which gave examiners the power to adjudicate distinctiveness at the prosecution stage, it has been a challenging issue for TM registration applicants and practitioners alike.
“Since the new legislation was introduced, NID has not been a predictable issue for clients to navigate and further clarity has been slow to come,” says Elliott Gold, a principal in the Toronto office of Smart & Biggar, a member of the IPH network. Canada is an outlier on this issue, and while other countries such as the US may have analogous grounds of objection, Canada has not provided trademark applicants and owners with an economically efficient or pragmatic manner to address the implications of such legislation. For example, the United States has a Supplemental Register for non-distinctive marks and a mechanism to move a Supplement Mark to the Principal Register once subsequently achieving distinctiveness.
It’s not that “distinctiveness” is new to Canadian law. The concept that a mark fails to distinguish a rights holder’s goods and services from those of others has been a consistent and effective ground of opposition and invalidity challenges for many years.
The Trademarks Office has provided some details on how NID objections are to be applied in the current edition of the Trademarks Examination Manual, which clearly states that the phrase “not inherently distinctive” in paragraph 32(1)(b) refers to a trademark having “no inherent distinctiveness” (not registrable) as opposed to a trademark possessing a “low degree of inherent distinctiveness” (registrable). On its surface, this should give comfort to applicants that there would be sparse application of this provision.
Unfortunately, because the examiners’ starting point is their broad and subjective personal assessments (for example, if they believe from their own perspective that the mark is descriptive, generic, or otherwise objectionable), a non-inherent distinctiveness objection means the applicant must now make arguments that the mark has the requisite level of distinctiveness or must supply evidence of acquired distinctiveness as of the filing date. It is unclear to what extent Examiners are trained on being cognisant of their own inherent biases as being members of the consumer public when making objections, which may contribute to the arbitrariness of objections.
Because TMs are frequently relatively new when prosecuted, it’s more difficult, and often impossible to provide evidence of use as of the filing date. Even if there is use, it is costly to provide the sales, advertising, and survey evidence usually required to prove distinctiveness.
But there’s an irony here: applicants must provide evidence even though the examiner’s objection is only based on a subjective impression. This is quite a different process and arguably entirely unpredictable and more burdensome than what rightsholders face in adversarial opposition proceedings where decision-makers decide on distinctiveness by weighing a full evidentiary record from all parties.
To be sure, the Trademarks Office’s Trademarks Examination Manual does require examiners to provide reasoning tied to the mark itself and to reference statutory authority. The Manual directs examiners to consider whether a mark is a geographic location, generic design, name of a colour or simple number, laudatory word, surname, or a combination of unregistrable elements, basic shapes, borders, and icons.
These directions have unmuddied the waters somewhat.
“At the beginning, it was very difficult to understand and predict when these objections would be encountered, but it’s a little easier now because there are rules about what examiners must consider, and they must provide reasons,” Gold says. “Still, there’s no significant case law on NID, which means that objections at the examination phase can still seem a bit arbitrary and personal.”
The fact remains, then, that a host of applications now face objections to registration when they would previously have been registrable in Canada, and continue to be registrable in other jurisdictions.
“The NID objection is seen as a barrier to doing business in Canada,” Gold says. “International companies don’t want to get caught up in unnecessary bureaucratic, uniquely Canadian procedures, which is how they perceive the NID objection.”
TMs that combine unregistrable elements uniquely are among those most susceptible to NID objection. “The Manual states and examiners rule that a TM is objectionable if each of its individual elements is objectionable,” Gold says. “But that’s contrary to the reasoning of the Trademark Opposition Board, which has consistently decided that non-distinctive elements can become distinctive in a unique combination.”
Also proven vulnerable to examiners’ NID objections are TMs susceptible to multiple meanings, and non-traditional marks such as scents, colours, textures, shapes, and sounds.
So, what’s an applicant to do?
“Follow the traditional rules that have been found to enhance distinctiveness, and lead to a unique, memorable, source-identifying trademark,” Gold says.
These, Gold adds, include using TMs:
- Without existing meanings, known as “coined terms”;
- Unrelated to goods and services (Gold cites the example of “Blackberry”, which was a known word but had not been applied to phones);
- That don’t refer to some characteristic of the product, even if the TMs are susceptible to multiple interpretations;
- That have strong visual design impacts, especially if the words are potentially descriptive; and
- That don’t include three-dimensional shapes that are the shape of the goods in the product.
“Overall, when choosing a brand, it is good practice to move away from words that have meaning within an industry context, because using them runs the risk of describing the product and creates a mark that is hard to make distinctive and enforce,” Gold says.
Julius Melnitzer is a Toronto-based legal affairs writer, ghostwriter, writing coach and media trainer. Readers can reach him at julius@legalwriter.net or on his website.
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