Generic Marks in Canada: Common Names of Goods (Section 12(1)(c))

Under Canadian trademark law, a trademark cannot be registered if it consists of the common name of the goods or services. This rule is set out in Section 12(1)(c) of the Trademarks Act and represents an absolute bar to registration.

This article explains what generic marks are in Canada, how “common names of goods” are assessed, how this ground differs from descriptiveness, and why generic terms can never function as trademarks.

1. What does Section 12(1)(c) prohibit?

Section 12(1)(c) provides that a trademark is not registrable if it is the name in the English or French language of the goods or services in association with which it is used.

In simple terms, if the trademark is the word Canadians use to name the product or service itself, it cannot be registered.

This prohibition applies regardless of:

• How long the term has been used
• How much money has been spent on marketing
• Whether consumers associate the term with a particular business

Generic terms are never capable of identifying a single commercial source.

2. What is a “common name of goods”?

A common name is the ordinary, everyday word that consumers use to identify a category of goods or services.

It answers the basic question:

“What is it?”

Examples of common names include:

• “Computer” for computers
• “Software” for software
• “Trademark registration” for trademark filing services
• “Car rental” for vehicle rental services

Because competitors must be free to use these words to describe their own goods or services, Canadian law does not allow them to be monopolized through trademark registration.

3. Generic vs. descriptive: a critical distinction

Generic marks are often confused with descriptive marks, but the legal consequences are very different.

• Generic terms name the goods or services themselves (the category).
• Descriptive terms describe a feature, quality, character, or purpose of the goods or services.

For example:

• “Email Hosting” → generic (names the service)
• “Secure Email” → descriptive (describes a quality)

This distinction matters because:

• Descriptive marks may sometimes be registered if they acquire distinctiveness
• Generic marks can never be registered

Once a term is found to be generic, the analysis ends.

4. The bilingual standard in Canada

Canada applies a bilingual standard when assessing genericness.

A mark will be refused if it is the common name of the goods or services in either English or French, even if it is not generic in the other language.

This means:

• A term that is generic in English will be refused, even if it is distinctive in French.
• A term that is generic in French will be refused, even if it is distinctive in English.

This rule reflects Canada’s official-language framework and applies regardless of the applicant’s intended market or language of use.

5. How CIPO determines whether a mark is generic

When assessing genericness under Section 12(1)(c), the :contentReference[oaicite:0]{index=0} (CIPO) focuses on consumer perception.

Common sources of evidence include:

• Dictionary definitions
• Industry usage and terminology
• Competitor websites and marketing materials
• Media references
• The applicant’s own use of the term

The key question is whether the relevant Canadian public understands the term primarily as the name of the goods or services, rather than as a brand.

6. No exception for acquired distinctiveness

Unlike clearly descriptive marks, generic marks cannot be rescued by acquired distinctiveness.

Even if a term has been used for many years and has achieved strong market recognition, it remains unregistrable if it is the common name of the goods or services.

This means:

• Section 12(3) (acquired distinctiveness) does not apply
• There is no fallback or alternative registration option
• Rebranding is often the only viable solution

7. Genericness applies to services as well as goods

Section 12(1)(c) applies equally to services, even though the wording of the provision historically refers to goods.

In practice, CIPO treats the common names of services in the same way as goods. If the trademark names the service itself, it will be refused.

For example:

• “Online Banking” for banking services
• “Domain Registration” for domain services
• “Tax Filing” for tax preparation services

These terms describe what the service is, not who provides it.

8. Practical implications for trademark strategy

Genericness represents one of the highest risks in Canadian trademark selection.

Best practices include:

• Avoiding terms that name the goods or services directly
• Preferring coined, arbitrary, or suggestive trademarks
• Checking meanings in both English and French
• Using generic terms only in descriptions, not as trademarks

Identifying generic risk early can prevent wasted filing costs and rebranding later.

9. Key takeaway

Under Section 12(1)(c), trademarks that consist of the common name of the goods or services are never registrable in Canada.

Generic terms cannot acquire distinctiveness, cannot be saved by evidence of use, and cannot be monopolized through trademark registration.

A successful Canadian trademark strategy begins by choosing a name that does more than describe the product—it must identify the source.

This article is for general informational purposes only and does not constitute legal advice.