CANADA: Trademark Authorities Hand Down Decision on Position Mark

The Trademark Opposition Board (TMOB) has issued its first decision (Five Seasons Comfort Limited v. Products Unlimited, Inc., 2025 TMOB 21) considering a “position of a sign,” a type of nontraditional trademark (NTM) that became part of the Canadian landscape on June 17, 2019.

The position mark (depicted below) was associated with “air filters for industrial and commercial uses and installations namely filters for paint booths.” The TMOB refused the application because the features of the trademark were dictated primarily by a utilitarian function:

The description of the trademark is as follows:

The trademark consists of the position of generally diamond-shaped apertures in which a column of generally diamond shaped apertures is slightly offset from another column to either side, the goods are shown with a dashed outline and do not form part of the trademark but is included merely to show the positioning of the trademark.

The opponent opposed the application on several grounds, but the TMOB focused on the non-registrability ground and Section 12(2) of the Trademarks Act, which denies registration of a trademark if, in relation to the goods or services listed in the application, its features are dictated primarily by a utilitarian function.

The opponent relied on statements published on the applicant’s website, including regarding the functional benefits of the apertures in the applicant’s product. This was enough for the opponent to meet its initial evidential burden. The applicant then argued that “the diamond shaped apertures are non-functional with respect to any other shape and the diamond shape does not offer any functional benefit over any other shape.” However, as the TMOB noted, the opposed trademark is not confined to the shape of the apertures, but rather the positioning of a series of apertures across the face of the product. This ground of opposition therefore succeeded.

The TMOB also indicated that the trademark could have been refused on the ground that it was “not distinctive” because the trademark was merely functional and utilitarian, had the opponent plead it.

This decision is a good reminder to be careful about publishing information that an opponent could use to oppose a trademark successfully. This is especially the case for NTMs such as position marks that someone can challenge because they are dictated primarily by a utilitarian function.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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