International Press Ltd v Tunnell [1938] 1 DLR 393 (ONCA)

Key Principle:

Generally, a description cannot be protected by trademark. However, if a descriptive word or phrase has come to be widely associated with a particular product, the producer of the product may lay claim to it.


The Situation:

You are a computer programmer and have designed and released a photo-editing application under the title “Basic Photo Editor.” Easy to use and inexpensive, your app is very popular. So popular, in fact, that a major commercial software company has heard of it. The company sells a similar photo editing application called “Cinch Photo Editor.” Annoyed by your success, it contacts you and threatens to take legal action. The company contends that the name of your application infringes their trademark. You haven’t even heard of Cinch Photo Editor.

The Conclusion:

The company’s threat is groundless. “Photo Editor” is a description that denotes a type of computer program. Unless the company can prove that the description has by common usage come to denote its product in particular, it may not claim the exclusive right to its use.