CIPO

Trademarks Examination Manual

Trademarks Examination Manual  1

1 Introduction  12

1.1 General information  12

2 Examination of applications as to form  12

2.1 Pre-examination  12

2.2 Request for expedited examination  12

2.3 Requirements for application – subsection 30(1)  13

2.4 Contents of application – subsection 30(2)  13

2.4.1 Identity of the applicant  13

2.4.1.1 Individuals  13

2.4.1.2 Partnerships  13

2.4.1.3 Associations  14

2.4.1.4 Joint ventures  14

2.4.1.5 Corporations  14

2.4.1.6 Use of French or English form of corporate name  15

2.4.1.7 Correcting the identification of an applicant  15

2.4.2 Postal address of the applicant  15

2.4.3 Representation or description of the trademark  15

2.4.3.1 Multiple views – paragraph 30(a) of the Regulations  15

2.4.3.2 Size of visual representation – paragraph 30(b) of the Regulations  16

2.4.3.3 Three-dimensional shape – paragraph 30(c) of the Regulations  16

2.4.3.4 Visual representations in colour – paragraph 30(d) of the Regulations  16

2.4.3.5 Visual representations in B&W – paragraph 30(e) of the Regulations  16

2.4.3.6 Sound recording – paragraph 30(f) of the Regulations  16

2.4.3.7 Clear and concise description – paragraph 30(g) of the Regulations  16

2.4.3.8 Colour description – paragraph 31(f) of the Regulations  16

2.4.3.8.1 Name of the colour  17

2.4.3.8.2 Colour identification system  17

2.4.3.8.3 Principal parts  17

2.4.3.8.4 Gradations  17

2.4.4 Statements of trademark type  18

2.4.5 Statement of goods or services in ordinary commercial terms – paragraph 30(2)(a)  19

2.4.5.1 Ordinary commercial terms  19

2.4.5.2 Specific goods or services  19

2.4.5.3 Context of the goods and services  20

2.4.5.4 “and the like”, “and similar goods”, “including”, “related to”, “related services”, “etc.”, and “featuring”  20

2.4.5.5 “namely”, “consisting of” or “specifically”  21

2.4.5.6 “in the nature of”, “such as”, “comprising”, “containing”, “in particular” or “particularly”  21

2.4.5.7 “accessories”, “equipment”, “apparatus”, “systems” and “products”  22

2.4.5.8 Parts and fittings  22

2.4.5.9 Devices  23

2.4.5.10 Computer software and computer programs  23

2.4.5.11 Discs and other blank or pre-recorded media  23

2.4.5.12 Pharmaceutical, veterinary, botanical, nutraceutical, homeopathic, medicinal and medicated preparations, remedies, supplements, extracts, functional foods, enhanced water, medicinal marijuana and cannabis oil  24

2.4.5.13 Intangibles  24

2.4.5.14 Advertising, promotion and marketing – benefit to a third party  24

2.4.5.15 Services related to the electronic transmission of data  25

2.4.5.16 Telecommunication-related services  25

2.4.6 Signature of applicant  26

2.4.7 Nice Classification – Subsection 30(3) of the Trademarks Act  26

2.4.7.1 Versions and editions  26

2.4.7.1.1 Effect of new edition on applications  26

2.4.7.1.2 Edition applicable to amendments to group the goods or services of registrations  27

2.4.7.2 Grouping goods and services according to the Nice Classification  27

2.4.7.2.1 Material composition  28

2.4.7.2.2 Reference to other classes  28

2.4.7.2.3 Class and context  28

2.4.7.2.4 Kits, gift baskets and goods sold as a unit  29

2.4.8 Priority – Section 34 of the Trademarks Act  29

2.4.8.1 Application requirements  30

2.4.8.2 Withdrawing a priority request  30

2.4.8.3 Dies Non  31

2.4.8.4 Force Majeure  31

2.4.9 Standard characters – Section 31 of the Trademarks Act  32

2.4.10 Non-traditional trademarks  33

2.4.10.1 Sound  33

2.4.10.2 Hologram  33

2.4.10.3 Moving image (motion)  34

2.4.10.4 Scent  35

2.4.10.5 Taste  35

2.4.10.6 Colour per se  35

2.4.10.7 A three-dimensional shape  35

2.4.10.8 Mode of packaging goods  36

2.4.10.9 Texture  36

2.4.10.10 Positioning of a sign  37

2.4.10.11 Combinations  37

2.4.10.12 Acceptable formats of electronic files  37

2.5 Certification marks — Sections 23, 24 and 25 and Paragraph 30(2)(b) of the Act  38

2.5.1 Definition of Certification Mark  38

2.5.2 Owner not engaged  38

2.5.3 Example of certification mark  39

2.5.4 Descriptive of place of origin — Section 25  39

2.5.5 Defined standard  39

2.5.6 Amending Applications to and from Certification Marks  40

2.6 Applications to extend the statement of goods or services – paragraph 41(1)(c) and subsection 41(2) of the Act  40

2.6.1 Conversion to an ordinary trademark application  40

2.6.2 Affidavit of continuous use  41

2.7 Divisional applications  41

2.7.1 Definitions  41

2.7.2 Why divide an application?  41

2.7.3 Filing a divisional application prior to advertisement  42

2.7.4 Steps deemed to have been taken  42

2.7.5 Filing a divisional application after advertisement  43

2.7.6 Applications filed prior to June 17, 2019  43

2.7.7 Mergers  43

2.7.8 Dividing an application to extend the statement of goods or services  43

2.7.9 Pending assignment  44

2.8 Amendments to an application  44

2.8.1 Changing the identity of the applicant  44

2.8.2 Changing the representation or description of the trademark  44

2.8.3 Amendments to goods or services  45

2.8.4 Adding a divisional application indication  45

2.8.5 Adding or deleting certain statements  45

2.8.6 Amending an application to/from a certification mark  45

3 Search / Confusion  46

3.1 Purpose of the search  46

3.2 Definition of confusion — subsection 6(2)  47

3.2.1 Surrounding circumstances – subsection 6(5)  48

3.2.1.1 Paragraph 6(5)(a) — Inherent distinctiveness and extent to which trademark has become known  49

3.2.1.1.1. Inherent distinctiveness  49

3.2.1.1.2. Extent to which a trademark has become known  50

3.2.1.2 Paragraph 6(5)(b) – Length of time used  50

3.2.1.3 Paragraph 6(5)(c) – Nature of goods or services  51

3.2.1.4 Paragraph 6(5)(d) – Nature of the trade  51

3.2.1.5 Paragraph 6(5)(e) – Degree of resemblance between the trademarks  52

3.3 Test of confusion  53

3.3.1 The relevant consumer  53

3.3.2 First impression and imperfect recollection  54

3.3.3 Likelihood vs. possibility  54

3.3.4 Both official languages  55

3.3.5 Trademarks in their totality  55

3.3.6 Evidence in the Form of a Letter of Consent Supporting No Likelihood of Confusion  55

3.3.7 Doubt as to confusion  56

3.4 Searching  56

3.5 Discovering a confusing trademark  56

3.5.1 Confusion with a registered trademark – Paragraph 12(1)(d)  56

3.5.2 Confusion with a co-pending application  57

3.5.2.1 Persons entitled to registration  57

3.5.2.2 Notification of applicants  57

3.5.2.3 Identical entitlement dates  57

3.5.2.4 Active applications  58

3.5.3 Same owner – Section 15  58

3.5.4 Confusion with a certification mark  58

3.5.5 Confusion with a Newfoundland registration  58

4 Examination of the trademark  59

4.1 Purpose of examination  59

4.2 Definition of trademark  59

4.3 Paragraph 12(1)(a) – Names and surnames  60

4.3.1 Definition of “word”  60

4.3.2 Definition of name or surname  60

4.3.3 Merely a name or a surname  61

4.3.4 Meaning of “primarily”  62

4.3.5 Test to determine primary meaning  62

4.3.6 Given name and surname  63

4.3.7 Surnames with “& Sons”, “Brothers”, “Inc.”, “Co.”, etc.  64

4.3.8 Compound surnames  64

4.3.9 Surnames that include accents or other characters  64

4.3.10 Reference sources – paragraph 12(1)(a)  65

4.3.11 Historical significance  65

4.3.12 Font embellishments  65

4.4 Paragraph 12(1)(b) – Clearly descriptive or deceptively Misdescriptive  66

4.4.1 Introduction  66

4.4.2 Examination under paragraph 12(1)(b)  66

4.4.3 Test for clearly descriptive  67

4.4.3.1 First impression  67

4.4.3.2 In association with the goods or services  68

4.4.4 Depicted, written or sounded  69

4.4.5 Misdescriptiveness  70

4.4.6 Deceptively misdescriptive  70

4.4.7 In the English or French languages  70

4.4.8 Character or quality  71

4.4.9 Embellishment of clearly descriptive words  72

4.4.10 “Sounded” test applied to composite trademarks  72

4.4.10.1 Determination of Whether Words are the Dominant Feature of a Combination Trademark  73

4.4.11 Trademarks which merely suggest character/quality  74

4.4.12 Conditions of production  75

4.4.13 Persons employed in the production  75

4.4.13.1 Professional designation  75

4.4.14 Place of origin  76

4.4.14.1. Geographic name  76

4.4.14.2. Origin of goods or services  77

4.4.14.3. Deceptively misdescriptive of the place of origin  77

4.4.14.4. Character of goods or services  78

4.4.14.5. Place of origin and top level domains (TLDs)  78

4.4.15 Pharmaceuticals  78

4.4.16 Abbreviations, acronyms or initials  78

4.4.17 Top level domains (TLDs)  79

4.4.18 Hashtag (#)  79

4.5 Paragraph 12(1)(c) – Name of goods or services  80

4.6 Paragraph 12(1)(d) – Confusion  80

4.7 Paragraph 12(1)(e) – Prohibited marks  80

4.7.1 Paragraphs 9(1)(a), (b) and (c)  81

4.7.2 Paragraph 9(1)(d)  81

4.7.3 Paragraph 9(1)(e)  81

4.7.4 Paragraphs 9(1)(f), (g), (g.1) and (h)  82

4.7.4.1 Paragraph 9(1)(h.1)  83

4.7.5 Paragraphs 9(1)(i) and 9(1)(i.1)  83

4.7.5.1 Paragraph 9(1)(i.2)  83

4.7.5.2 Paragraph 9(1)(i.3)  83

4.7.6 Paragraph 9(1)(j)  83

4.7.7 Paragraph 9(1)(k)  85

4.7.7.1 Falsely suggest a connection  85

4.7.7.2 Significant public reputation  85

4.7.7.3 Musical bands  86

4.7.7.4 Consent  86

4.7.8 Paragraph 9(1)(l)  86

4.7.9 Paragraph 9(1)(m)  87

4.7.10 Paragraph 9(1)(n)  87

4.7.10.1. Paragraph 9(1)(n.1)  88

4.7.11 Paragraph 9(1)(o)  88

4.7.12 Section 10  89

4.7.13 Sections 9 and 10 – Informing the applicant  89

4.7.14 Paragraph 9(2)(a) – Consent  89

4.7.14.1 Paragraph 9(2)(b)  90

4.7.15 Paragraph 12(1)(f) and section 10.1 – Plant variety denominations  90

4.7.16 Paragraphs 12(1)(g), (h) and (h.1) – Protected geographical indications for wines, spirits or agricultural products and food  90

4.7.17 Paragraph 12(1)(i) — Olympic and Paralympic Marks Act  91

4.8 Subsection 12(2) – Functionality  91

4.8.1 Purpose  91

4.8.2 Examples  92

4.8.2.1 A three-dimensional shape  92

4.8.2.2 Colour  93

4.8.2.3 Sound  93

4.8.2.4 Taste  93

4.8.2.5 Scent  93

4.9 Paragraph 32(1)(b) – Not Inherently Distinctive  93

4.9.1 General  94

4.9.2 Distinctiveness  94

4.9.3 Inherently distinctive  94

4.9.4 Examination  95

4.9.5 Examples  96

4.9.5.1 Geographic locations  96

4.9.5.2 Generic designs  96

4.9.5.3 Names of colours  96

4.9.5.4 One- and two-letter or -number trademarks  97

4.9.5.5 English and French  97

4.9.5.6 Foreign characters and words  97

4.9.5.7 Multiple surnames  97

4.9.5.8 Names and honorifics  97

4.9.5.9 Laudatory words and phrases  98

4.9.5.10 Provides generic information  98

4.9.5.11 Combinations of unregistrable elements  98

4.9.5.12 Paragraphs 12(1)(a), or (b) of the Act  99

4.9.5.13 Possessive determiners  99

4.9.5.14 Internet TLDs, and URLs  99

4.9.5.15 Phone numbers  99

4.9.5.16 Forms of business association  99

4.9.5.17 Colour(s) applied to the surface of a three-dimensional object  100

4.9.6 Overcoming an objection raised under paragraphs 37(1)(d)/32(1)(b)  100

4.10 Subsection 32(1) – Evidence of Distinctiveness  100

4.10.1 General  100

4.10.2 Form of Evidence  101

4.10.2.1 Master affidavits  101

4.10.2.2 Additional affidavits  102

4.10.2.3 Survey evidence  102

4.10.2.4 Restriction as to territory  103

4.10.2.5 Voluntary restrictions as to territory  104

4.10.3 Determining acquired distinctiveness  104

4.11 Disclaimers – Section 35  105

5 Examination of Official Marks  105

5.1 Public authority – Official marks  105

5.1.1 Obligation to evaluate public authority status in Canada  105

5.1.2 Test to determine public authority status  106

5.1.2.1 Governmental control  106

5.1.2.2 Public benefit  107

5.1.3 Evidence of adoption and use of an official mark  107

6 Examiners' reports  108

6.1 Subsection 37(2) – Notification of objections  108

6.2 First reports  108

6.2.1 Goods or services  109

6.2.1.1 Nice Classification  109

6.2.2 Paragraph 12(1)(a)  109

6.2.3 Paragraph 12(1)(b)  110

6.2.4 Paragraph 12(1)(c)  110

6.2.5 Paragraph 12(1)(d)  110

6.2.6 Paragraph 12(1)(e)  110

6.2.7 Paragraph 12(1)(f)  110

6.2.8 Paragraphs 12(1)(g), (h) and (h.1)  110

6.2.9 Dates of entitlement  111

6.3 Second or maintaining actions  111

6.4 Subsequent actions  111

6.4.1 Evidence  112

6.4.2 Deletion of goods or services  112

6.4.3 Additional information  112

6.4.4 Clarification by examiners  112

6.4.5 Further entitlement objections after pre-publication search  112

6.4.6 Section 44 or 45 notices  112

6.4.7 Consent – confusing trademarks  112

6.5 Telephone amendments  113

6.5.1 Written confirmation not required  113

6.5.2 Written confirmation required  113

6.6 Approval and advertisement  114

6.7 Default and abandonment  114

6.8 Extensions of time  114

6.8.1 To respond to an Examiners' report  115

6.8.2 Extensions of time to respond to a notice issued under section 44.1 of the Trademarks Act  116

6.8.3. Extensions of Time on Force Majeure  117

6.8.4 Fees for extension of time requests  118

6.9 Refusal  119

6.10 Notification of third-party rights  119

6.10.1 Background  119

6.10.2 Communication procedures  120

6.10.3 Appropriate grounds  120

6.10.4 Required information  120

6.10.5 Timing  120

6.10.6 Continued monitoring  120

7 Representation  121

7.1 Definition of trademark agent and associate trademark agent  121

7.2 Power to appoint  121

7.3 Persons authorized to act  121

7.3.1 Self-representation  121

7.3.2 Representation by a trademark agent  122

7.3.3 Inactive trademark agents  122

8. Transitionals  122

8.1 Introduction to transitional provisions  123

8.2 Filing date not granted  123

8.3 Filing date granted  123

8.3.1 Bases for registration (claims)  124

8.3.2 Not inherently distinctive  124

8.3.3 Section 14  124

8.3.4 Certification marks  124

8.3.5 Utilitarian function  125

8.3.6 Distinguishing guise  125

8.3.7 Nice classification  125

8.3.8 Associated marks  125

8.3.9 Standard character trademarks  125

8.3.10 Non-traditional trademarks  125

8.3.11 Fees  126

8.4 Advertised and Allowed  126

8.5 Registered  127


 

1 Introduction

1.1 General information

The Trademarks Examination Manual (the “Manual”) is designed to serve the needs of trademark examiners as well as applicants and their agents. The Trademarks Office (“the Office”), a branch of the Canadian Intellectual Property Office (“CIPO”), is the official government body which receives and processes applications submitted by individuals and companies who wish to register their trademarks.

This Manual incorporates the interpretation of provisions of the Trademarks Act (the “Act”) and the Trademarks Regulations (the “Regulations”) by the Courts with the goal of providing consistent, high-quality decision-making by the Office.

It should be noted that the Manual is a reference guide only and is not binding on the Office; it is in no way intended to replace the Act or Regulations. In the case of any inconsistency between the Manual and the legislation, the Act and Regulations must be followed.

2 Examination of applications as to form

2.1 Pre-examination

The processing of an application involves several different operational units of the Office. The majority of trademark applications are filed electronically and sent directly to the Formalities Section. The Incoming Correspondence Unit (the “ICU”) receives paper-based applications for initial processing and then forwards the application to the Finance and Administration Directorate which is responsible for receiving and coding fees.

After processing the filing fees, the ICU transfers the application to the Formalities Section which then assigns the application a number. The Formalities Section then grants the application a filing date if the application contains the filing requirements listed under subsection 33(1) of the Act.

The application is formalized and entered into the trademarks database. Receipt of the application is then acknowledged and sent to the applicant. The Formalities Section then transfers the application to the Examination Section where it is searched and examined.

2.2 Request for expedited examination

The Office generally examines trademark applications in the order in which they are received. The advancement of an application out of order creates a favoured position at the expense of other applicants and therefore the Registrar does not consider requests for expedited examination.

2.3 Requirements for application – subsection 30(1)

Subsection 30(1) of the Act contains a pre-condition for filing an application for the registration of a trademark. Specifically, a person may file an application if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services listed in the application. It is the responsibility of the applicant to ensure that use of the trademark in Canada does not contravene any other legislation.

2.4 Contents of application – subsection 30(2)

After an application receives a filing date, examiners begin the initial examination to ensure that all the formal requirements of the application have been satisfied as set out in subsection 30(2) of the Act.

As part of the examination, examiners will also assess whether the goods or services have been properly grouped according to the classes of the Nice Classification.

2.4.1 Identity of the applicant

Paragraph 31(a) of the Regulations sets out that for the purposes of paragraph 30(2)(d) of the Act, an application must contain the name of the applicant.

In order to be entitled to registration of a trademark, an applicant must be a “person”. For the purposes of a trademark application, a “person” may be an individual, partnership, trade union, association, joint venture, or corporation. Furthermore, in accordance with section 2.1 of the Act, a person can include “two or more persons who, by agreement, do not have the right to use the trademark in Canada except on behalf of both or all of them.”

The Registrar will generally not require an applicant to confirm that it is a “person”; the onus rests ultimately with the applicant to ensure compliance with the Act.

2.4.1.1 Individuals

When the applicant is an individual, he/she shall provide a surname and at least one given name. Any trading styles used can also be incorporated in the applicant's identification, but the applicant must not be identified by a trading style alone.

Example: “John Smith trading as Smith’s Deli”

Example: “Jane Miller, doing business as Jane’s Consulting Services”

2.4.1.2 Partnerships

Trademark applications may be filed in the name of a partnership, which is considered a lawful association. Generally, a group of persons conducting a business as a partnership does so under a trading style.

Example: “Mary Jones and John Smith, a partnership, doing business as Jones Smith Enterprises”

The onus of determining whether a partnership is a legal entity rests with the applicant.

2.4.1.3 Associations

Associations are membership organizations, with the primary focus of providing services and benefits to members of a specific group.

Example: “The Canadian Medical Association”

2.4.1.4 Joint ventures

Trademark applications may be filed by two or more persons who are engaged jointly in commercial activities (a joint venture) which is another form of lawful association. The full names of the parties of the joint venture must be set out in the application, as well as any trading name, if applicable. Only the general partners in a joint venture need be named, not any limited partners.

Example: “ABC Inc. and XYZ Co., a joint venture doing business as Alpha Enterprises”

The Office does not require information establishing the degree of involvement of each party to the joint venture. Such information may be required, however, to disclose the procedure by which the trademark may be assigned or ownership resolved if the joint venture is dissolved. This requirement will be dictated by the facts in each case, and the documentation submitted at the time of transfer should deal with this question.

2.4.1.5 Corporations

A corporation may be a private organization or a public authority (e.g., a municipal or provincial corporation or a provincial or federal statutory body). The application must contain the full name of the corporation. It is not a requirement to name the jurisdiction under whose laws it was incorporated.

Care must be taken to ensure that the corporation, and not an individual, is identified as the applicant. In the following examples, if the applicant is XYZ Ltd., all information preceding XYZ Ltd. is considered superfluous and must not be included when identifying the applicant:

Individuals who intend to incorporate at a later date must ensure that the application does not identify the applicant as the as-yet-uncreated corporation, as it is not considered to be a “person” under the Act.

Where a division or component of a corporation is engaged in commercial activity associated with the use of a trademark, examiners would accept the following:

In both cases, “General Furniture Ltd.” would be considered the applicant.

2.4.1.6 Use of French or English form of corporate name

Subsection 10(3) of the Canada Business Corporations Act states that:

Subject to subsection 12(1), the name of a corporation may be set out in its articles in an English form, a French form, an English form and a French form, or a combined English and French form, so long as the combined form meets the prescribed criteria. The corporation may use and may be legally designated by any such form.

Therefore, an applicant whose name incorporates both a French and English version (e.g., Pamplemousse Inc./ Grapefruit Inc.) will be recognized as the same entity whether identified only as Pamplemousse Inc. or as Grapefruit Inc.

2.4.1.7 Correcting the identification of an applicant

Please see section 2.8.1 Changing the identity of the applicant of this Manual.

2.4.2 Postal address of the applicant

Paragraph 31(a) of the Regulations sets out that for the purposes of paragraph 30(2)(d) of the Act, an application must contain the postal address of the applicant. A postal address is the address at which mail can be received, as distinct from the actual street or rural address.

An address for correspondence may also be provided if the applicant wishes to receive mail at a different address.

Where an applicant consists of two or more persons, only one address may be provided (see subsection 6(1) of the Regulations).

2.4.3 Representation or description of the trademark

Also see section 2.4.10 of this Manual regarding the application requirements for non-traditional trademarks.

Paragraph 30(2)(c) of the Trademarks Act provides that an application is required to contain a representation or description, or both, that permits the trademark to be clearly defined.

The following subsections summarize the requirements prescribed for the purpose of paragraph 30(2)(c) of the Act.

2.4.3.1 Multiple views – paragraph 30(a) of the Regulations

A visual representation may contain more than one view of the trademark but only if the multiple views are necessary for the trademark to be clearly defined. If an application contains a visual representation that contains views which are not, in the opinion of the examiner, required to clarify the trademark, the examiner will require the applicant to file a revised application which removes the extraneous views.

2.4.3.2 Size of visual representation – paragraph 30(b) of the Regulations

Any two-dimensional visual representation provided in an application must not exceed 8cm x 8cm. For applications filed using the online system, visual representations will be reformatted automatically to fit this size requirement.

2.4.3.3 Three-dimensional shape – paragraph 30(c) of the Regulations

If the trademark consists in whole or in part of a three-dimensional shape, any visual representation provided by the applicant must be a two-dimensional graphic or photographic representation. The Office will not accept, for example, a physical specimen of the trademark as meeting this requirement.

2.4.3.4 Visual representations in colour – paragraph 30(d) of the Regulations

If colour is claimed as a feature of the trademark, or if the trademark consists exclusively of a single colour or a combination of colours without delineated contours, any visual representation provided by the applicant must be in colour. If an application includes a visual representation that is not in colour, but colour is claimed as a feature of the trademark, the examiner will require the applicant to file an amended application which either 1) removes the colour claim or 2) has a visual representation that is in colour.

2.4.3.5 Visual representations in B&W – paragraph 30(e) of the Regulations

If colour is not claimed as a feature of the trademark, or if the trademark does not consist exclusively of a single colour or a combination of colours without delineated contours, any visual representation must be in black and white. If an application includes a visual representation that is in colour, but does not include a colour claim, the examiner will require the applicant to file an amended application which either contains 1) a colour claim or 2) a visual representation that is in black and white.

2.4.3.6 Sound recording – paragraph 30(f) of the Regulations

If the trademark consists in whole or in part of a sound, a representation must include a recording of the sound in the form of an MP3 file, the size of which may not be larger than 10MB. Applications filed by paper may provide electronic files of sounds on a CD, DVD, or USB stick.

2.4.3.7 Clear and concise description – paragraph 30(g) of the Regulations

Any description of the trademark provided by the applicant must be clear and concise. If, in the opinion of the examiner, the description of the trademark is vague or contains extraneous information which does not permit the trademark to be clearly defined, the examiner will require the applicant to file an amended application which includes an acceptable description.

2.4.3.8 Colour description – paragraph 31(f) of the Regulations

Also see the practice notice entitled “Describing Colour”.

Paragraph 31(f) of the Regulations requires applications that claim colour as a feature of the trademark to name each colour and indicate the principal parts of the trademark that are in that colour. Similarly, paragraph 31(g) of the Regulations specifies that if a trademark consists exclusively of a single colour or a combination of colours without delineated contours, the application must contain the name of each colour.

2.4.3.8.1 Name of the colour

Where an application is required to provide the name of a particular colour, its generic name should be used.  For example, “blue,” “red,” “magenta,” “teal,” and “mauve” are acceptable generic colour names. Additionally, colour names which incorporate adjectives to add specificity, such as “greyish-green,” “medium orange,” or “purplish-blue,” are also acceptable.

Examiners will generally not question how colours are described unless there is a discrepancy between the appearance of the colour shown in the visual representation and the written description.

2.4.3.8.2 Colour identification system

In order to more accurately describe a colour, an applicant may reference a colour identification system. Should the name of the colour identification system be the subject of a registered trademark, the name of the system must be set out in uppercase letters and the description must include the statement that the name of the system is a registered trademark. The following would be an example of an acceptable colour claim:

Colour is claimed as a feature of the trademark.  The letter “A” in the trademark is the colour light blue (PANTONE* 317C).  *PANTONE is a registered trademark.

Reference to a colour system alone (i.e. PANTONE* 32C) is not acceptable since the colour claim in the application must always include the name of the colour(s). While the Office does not endorse or recommend any one colour identification system, any system referenced should be readily accessible and understandable by the general public.

2.4.3.8.3 Principal parts

Applications which claim colour(s) as a feature of the trademark must provide an indication, by way of written description, of the principal parts of the trademark that are in each colour.  What constitutes the “principal parts” of a particular trademark will depend on the complexity of the trademark. However, in general, the application need only describe the readily-identifiable elements of a trademark that appear in each colour.  For example, if a trademark contained a forest scene, an acceptable colour claim might be:

Colour is claimed as a feature of the trademark.  The sky is blue, the grass is green, the tree trunks are brown and the leaves are red, orange, and yellow.

2.4.3.8.4 Gradations

If a trademark contains a colour claim and a colour appears in gradations, the application should describe the transition. For example, acceptable colour claims for trademarks that contain a gradation of colour(s) could read:

Colour is claimed as a feature of the trademark. The spheroid design transitions from dark red in the upper-left portion to light red in the lower-right portion.

Colour is claimed as a feature of the trademark.  The swirl design transitions left to right from purple to red to blue.

2.4.4 Statements of trademark type

Also see Section 2.4.10 of this Manual regarding the application requirements for non-traditional trademarks.

Paragraph 31(e) of the Regulations prescribes, for the purpose of paragraph 30(2)(d) of the Act, that if a trademark consists in whole or in part of

a three-dimensional shape

a hologram

a moving image

a mode of packaging goods

a sound

a scent

a taste

a texture

the positioning of a sign

the application must include a statement to that effect. For example, the following statement would meet this requirement:

“The trademark consists in whole or in part of a hologram.”

Paragraph 31(f) of the Regulations prescribes, for the purpose of paragraph 30(2)(d) of the Act, that if colour is claimed as a feature of the trademark, the application must include a statement to that effect. For example, the following statement would meet this requirement:

“Colour is claimed as a feature of the trademark.”

Paragraph 31(g) of the Regulations prescribes, for the purpose of paragraph 30(2)(d) of the Act, that if a trademark consists exclusively of a single colour or a combination of colours without delineated contours, the application must include a statement to that effect. For example, the following statement would meet this requirement:

“The trademark consists exclusively of the colour red without delineated contours.”

Paragraph 31(h) of the Regulations prescribes, for the purpose of paragraph 30(2)(d) of the Act, that if a trademark is a certification mark, the application must include a statement to that effect. For example, the following statement would meet this requirement:

“The trademark is a certification mark.”

2.4.5 Statement of goods or services in ordinary commercial terms – paragraph 30(2)(a)

Paragraph 30(2)(a) of the Act requires that an application for a trademark contain “a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used”.  Furthermore, section 29 of the Regulations states that the statement of goods or services “must describe each of those goods or services in a manner that identifies a specific good or service”.

A representative listing of acceptable goods and services that are considered to be ordinary commercial terms for specific goods or services can be found in the Goods and Services Manual.

For goods or services not found in the Goods and Services Manual, acceptable listings can be used to indicate, by analogy, the kinds of statements that would also be acceptable to describe similar goods or services. A statement of goods or services is acceptable if it as specific as, or more specific than, a related or similar listing.

2.4.5.1 Ordinary commercial terms

A statement of goods or services is considered to be in ordinary commercial terms where research discloses that similar language and scope has been used by others in the same industry to describe the applicant's goods or services (see Dubiner v. Heede International Ltd. (1975), 23 C.P.R. (2d) 128 and Mövenpick-Holding AG v. Sobeys Capital Incorporated, 2010 TMOB 41).

Simply because a statement of goods or services can be understood does not mean that it is a description that is customarily used in the trade (see Decra-Loc Canada Ltd. v. Pave Tech Inc. (1995), 61 C.P.R. (3d) 553).

Examiners will conduct research to determine whether there are commercial uses of the description of goods and services in question that would demonstrate that they are described as they normally would be in the trade.

Where ordinary commercial terms cannot be found, the statement of goods or services must be clear and concise; technical, lengthy or ambiguous descriptions of the characteristics of the goods or services are not acceptable.

Registered trademarks cannot be used in statements of goods or services since they are not considered to be in ordinary commercial terms.

2.4.5.2 Specific goods or services

Section 29 of the Regulations requires that statements of goods or services must describe each of those goods or services in a manner that identifies a specific good or service. For example, while “clothing” is an ordinary commercial term, it does not identify a specific good, whereas “exercise clothing” is considered to be specific since the functional type of clothing has been provided.

In order to specifically define a good, it may be necessary to include the area of use of the good. For example, the statement “catalysts” on its own is not specific enough for the purposes of the Regulations. However “catalysts for use in oil processing” and “catalysts for use in the manufacture of industrial chemicals” both define the areas of use for the catalysts and render the description acceptable. Including the area of use becomes especially important in cases where a term can have different meanings. For example, “crimping irons” can be used for hair but also for mending or molding leather or iron.

Similarly, “consulting” services may be an ordinary commercial term, but further specificity, by indicating the field of use, is required. For example, “consulting in the field of workplace safety” is considered to be a specific service stated in ordinary commercial terms.

While a statement of services may be more difficult to specify than a statement of goods, the Regulations require some specificity in association with services where it is reasonable to expect that a more specific statement of services in ordinary commercial terms can be provided by an applicant (see Sentinel Aluminium Products Co. v. Sentinel Pacific Equities Ltd. (1983), 80 C.P.R. (2d) 201).

The following three-part test will be considered in determining whether the statement goods or services identifies a specific good or service within the meaning of section 29 of the Regulations:

1. Are the goods or services described in a manner such that it is possible to assess whether paragraph 12(1)(b) of the Act applies? A trademark that clearly describes a character or quality of the goods or services is not registrable.

2. Does the statement identify a specific good or service to ensure that the applicant will not have an unreasonably wide ambit of protection? For example, goods described as “computer software”, without further specification, would give the applicant an unreasonably wide ambit of protection.

3. Are the goods or services described in a sufficiently specific manner such that it is possible to assess confusion? A trademark that is confusingly similar to a registered trademark or a pending trademark is not registrable.

2.4.5.3 Context of the goods and services

In some cases, the context of a statement of goods or services may serve to specify an otherwise unacceptable statement. Goods or services may be acceptable when they are understood as being sufficiently specific in the context of the entire statement of goods or services.

For example, “cases” alone are not acceptable as they could include any type of “cases” from camera cases to pillowcases. However, in an application for “cameras, tripods, and cases”, the goods “cases” would be acceptable as it is clear from the context that the “cases” would be restricted to camera cases. Similarly “delivery” services alone is not acceptable as the service could include any type of delivery from flower delivery to furniture delivery. However, an application for “restaurant services and delivery” would be acceptable as “delivery” would be understood to mean food delivery.

Note: Goods or services which are separated by semi-colons (;) are generally considered to stand on their own and therefore must meet the requirements of paragraph 30(2)(a) of the Act and section 29 of the Regulations without regard to the other listed goods or services.

2.4.5.4 “and the like”, “and similar goods”, “including”, “related to”, “related services”, “etc.”, and “featuring

Statements of goods or services must be specific and avoid indefinite words and phrases. As a general rule, the following indefinite terms cannot be used to specify goods or services which would otherwise require further specification: “and the like”, “and similar goods”, “including”, “related to”, “and related services”, “etc.” and “featuring”. Such terms are generally only acceptable when they follow specific goods or services.

For example, since “restaurant services” describes a specific service, “restaurant services including take-out services” would be acceptable. Similarly, since “mutual fund services” describes a specific service, “mutual fund services including mutual fund distribution” would be acceptable. However, “financial services relating to mutual fund services” would not be acceptable as financial services alone are not considered to describe a specific service.

In some circumstances, indefinite terms may be used in a statement of goods or services if they are used to provide further specification which is not essential to determining the specific nature. For example, “roller-type lint remover for use in removing foreign particles from clothing, furniture, upholstery and the like” is acceptable since the goods have already been specifically defined as being for “removing foreign particles from clothing, furniture, upholstery” and the indefinite term “and the like” merely indicates other similar uses.

As a general rule, the term “featuring” will only be acceptable when it follows specific goods or services. For example, since “casual clothing” is acceptable, “casual clothing featuring pants, dresses and shorts” is also acceptable. However, “clothing featuring pants, dresses and shorts” would not be acceptable since “clothing” is not considered to describe a specific good.

The Office accepts the use of “featuring” where the applicant must indicate the specific content or field of interest (e.g., books, computer games, movies, music, photos, etc.) of CDs, DVDs, optical, floppy or other discs. For example, “compact discs featuring topics of instruction in astronomy” and “digital videodiscs featuring computer games” are acceptable.

2.4.5.5 “namely”, “consisting of” or “specifically

Goods and services that require further specification may be specified using the definite terms “namely”, “consisting of” or “specifically”.

For example, “alarms” are considered to be too broad but may be further specified by using the definite term “namely” to list the type of alarms, e.g., “alarms, namely fire, car, and burglar”. Similarly, “consulting” is considered to be too broad but may be further specified by using the definite term “namely”, e.g., “consulting services, namely business management consulting” or by using the definite term “specifically”, e.g., “consulting services, specifically capital investment consulting”.

Note: The Office, for purposes of clarity, does not accept the colon (:) instead of “namely”.

2.4.5.6 “in the nature of”, “such as”, “comprising”, “containing”, “in particular” or “particularly

These terms may be acceptable in a statement of goods or services where the kind, sort or type of goods or services has been specified and the goods or services following any of these terms are considered to comply with paragraph 30(2)(a) of the Act.

For example, “clothing in particular casual wear” is understood to be limited to “casual wear” which is listed as acceptable in the Goods and Services Manual. However, “clothing comprising outerwear” is not considered to be acceptable since “outerwear” is not considered to be a specific kind, sort or type of clothing. Goods stated as “gift baskets containing cheese, bread and prepared meats” are understood to be limited to the goods listed after “containing” which are acceptable pursuant to paragraph 30(2)(a) of the Act.

However, “electrical systems comprising modules” would not be acceptable since “modules” are not considered to be ordinary commercial terms nor are they specific goods.

Similarly, “entertainment services such as hockey games” are understood to be limited to “hockey games” which are considered to be in ordinary commercial terms for specific services and do not encompass other services.

However, “entertainment services in the nature of music events” are not considered to be acceptable since the kind, sort or type of music event has not been specified.

2.4.5.7 “accessories”, “equipment”, “apparatus”, “systems” and “products”

As a general rule, goods described by the terms “accessories”, “equipment”, “apparatus”, “systems”, or “products” are not considered acceptable without further specification since they are considered to include different types of goods with different channels of trade which are not necessarily sold in close proximity.

For example, “automobile accessories” could reasonably include everything from air deodorizers to first-aid kits to portable televisions. However, “hair accessories” are acceptable since the accessories are reasonably understood in the trade to be a recognized set of items with the same channels of trade that are typically sold in close proximity, such as barrettes, clips, and side combs.

Similarly, “telecommunications equipment” could include everything from end user items such as fax machines and two-way radios, to goods that support telecommunications delivery such as communication towers and fibre optic cables. However, “hair cutting equipment” is acceptable since the function or the area of use of the equipment can be reasonably understood to be very narrow, since hair cutting is clearly understood to be a singular activity and the equipment confines itself to manual or power operated tools for cutting hair.

Another example is “teaching apparatus” which could reasonably include everything from computer software, to notebooks, to videodiscs. However, “anesthetic delivery apparatus” is acceptable since the function or area of use of the apparatus can be reasonably understood to be very narrow and the goods are understood in the trade to refer to a limited set of items in the medical field such as the anesthetic machine, vaporizers, ventilators, and monitors.

Goods including the term “systems” may be acceptable if the goods are reasonably understood in the trade to be a recognized set of items that is often sold as one complete unit, such as “suspension systems for motor vehicles”, which are specific ordinary commercial terms for the system of springs, shock absorbers and linkages that connect a motor vehicle to its wheels.

Goods including the term “products” may be acceptable if the goods are ordinary commercial terms for specific goods, such as “dairy products”, which are considered to be foodstuffs made from milk that are sold through the same channels of trade in close proximity to each other.

2.4.5.8 Parts and fittings

In general, “parts” and “fittings” are acceptable if the goods for which the “parts” and “fittings” are intended are acceptable pursuant to paragraph 30(2)(a) of the Act and section 29 of the Regulations. For example, “dish washer parts and fittings” would be acceptable since the goods “dish washers” are considered to be ordinary commercial terms for specific goods.

2.4.5.9 Devices

Where ordinary commercial terms for the goods cannot be found, the term “devices” may be acceptable if the field and function is provided and the goods meet the requirements of the three-part test described in section 2.4.5.2 of this Manual). For example, the Goods and Services Manual lists as acceptable the goods “medical devices for the qualitative detection of antibodies in human specimens collected as plasma or dried blood spots” and “electronic medical devices implanted in the eye to help restore vision”.

2.4.5.10 Computer software and computer programs

An identification of “computer software” or “computer programs” is not acceptable without further specification. The specific function of the computer software must be provided and, if the area of use is not obvious from the function of the computer software, the specific area of use should also be provided. Acceptable entries for computer software can be found in the Goods and Services Manual.

2.4.5.11 Discs and other blank or pre-recorded media

The goods “pre-recorded discs” and “pre-recorded magnetic data carriers” are not considered to be specific pursuant to paragraph 30(2)(a) of the Act and section 29 of the Regulations. The specific format of these goods must be described, e.g., “floppy disks”, “hard disks”, “CDs”, “DVDs”, “CD-ROMs” and “magnetic-stripe cards”. The specific content of these goods must also be described, e.g., movies, music, photos, language instruction, computer games, hotel room key cards or phone cards.

Discs that contain pre-recorded media may also specify content by indicating the specific field of interest, followed by the words “containing topics”, “featuring topics” or “containing information”, e.g., “featuring topics related to the game of baseball”, “containing topics of instruction in astronomy”, “containing information in the field of trademarks”. However, “topics in the field of business consulting” is not considered to be a specific field of interest since “business consulting” is a general term that encompasses a wide variety of topics.

If the content of the discs is described by indicating only a specific field of interest, it is understood that the primary purpose of the discs is to provide information. While the discs may include various audio-visual components, the Office considers that the discs do not contain software nor do they contain books, computer games, movies, music etc., unless the applicant explicitly states that they do.

If either the pre-recorded discs or the pre-recorded magnetic data carriers contain computer software, the function of the software must be provided and, if the area of use is not obvious from the function of the computer software, the area of use should also be provided.

Note: The goods “pre-recorded audiotapes”, “pre-recorded videotapes”, “pre-recorded videocassettes”, “pre-recorded audio cassettes”, “audio tape recordings” and “video tape recordings” are considered to indicate a specific format and specific content since the nature of the media limits the content to solely magnetic recordings of sounds and visual images and are therefore acceptable as indicated.

2.4.5.12 Pharmaceutical, veterinary, botanical, nutraceutical, homeopathic, medicinal and medicated preparations, remedies, supplements, extracts, functional foods, enhanced water, medicinal marijuana and cannabis oil

Goods that are described as “preparations”, “remedies”, or “supplements” for “pharmaceutical”, “veterinary”, or “medicinal” use are not considered specific pursuant to paragraph 30(2)(a) of the Act and section 29 of the Regulations. The Registrar requires such goods to be specified in greater detail by either:

Veterinary pharmaceuticals, preparations or medicines are often divided into areas relating to specific animals or groups of animals, and often relate to the prevention rather than treatment of disease. For example, “pharmaceutical preparations for the treatment of infectious diseases, namely respiratory infections, eye infections” requires the type of “infectious diseases” to be specified. However, “veterinary pharmaceutical preparations for the treatment of infectious diseases in poultry” require only the type of animal or group of animals to be specified.

2.4.5.13 Intangibles

Intangibles such as “web sites”, “electricity”, “domain names”, “steam”, and “waste gas” should not be listed in a statement of goods since they are considered to be services, such as the following from the Goods and Services Manual: “website design”, “web hosting”, “energy recycling services that capture and converts wasted energy into electricity and useful steam”, “selling domain names”, “domain name registration”, and “waste gas treatment services”. Where an application lists such intangibles in the statement of goods, and it appears that the applicant may actually be offering services, the examiner will so advise the applicant.

2.4.5.14 Advertising, promotion and marketing – benefit to a third party

In view of the Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R.(3d) 528 decision, examiners will question services where it is not clear that a real service is provided to the public. The criterion is whether a third party benefits from the service. For example, if the applicant's “advertising” and “marketing” services simply make the public aware of the applicant's own products, there is not considered to be a benefit to the public. In order to determine if the service is being offered to a third party, examiners may ask for further specificity by questioning the means or manner by which the service is provided. For example, the following would be considered acceptable:

In circumstances where the public does benefit from promotional services, in spite of the fact that they relate to the promotion of the applicant's own goods and services, the services will be considered acceptable. For example, “providing coupon programs pertaining to a line of food products” is considered a service within the meaning of section 4 of the Trademarks Act.

Examiners will question “cooperative advertising” as it is generally understood to be a cost sharing arrangement between the retailer and supplier for the advertising and promotion of their products.

In order to be acceptable, the statement of services must be described so that it is clear that the services are offered to a third party, and the services must be described in specific and ordinary commercial terms in compliance with paragraph 30(2)(a) of the Act and section 29 of the Regulations.

2.4.5.15 Services related to the electronic transmission of data

As a general rule, services including the term “data” such as “data transmission services”, “electronic transmission of data”, “data and voice telecommunications” or “electronic transmission of data and documents via computer terminals” or services that relate to data such as “delivery of messages by electronic transmission” or “electronic-store-and-forward messaging” are not acceptable without further specification since “data” in this context can include any information in numerical form that can be digitally transmitted or processed (including audio, video, voice, or any other form of data).

If the essential nature of the services involves providing data to customers, the applicant should set out the specific nature of the data (e.g., financial advice, client lists, video news show, music, etc.), and the general means by which it is communicated to the customer (e.g., online databases, online stores, Web sites, email, pager, or cellular text messages, etc.).

If the essential nature of the services involves providing the ability to communicate (i.e., transmission services), then the applicant should set out the specific means of communication (e.g., satellite, wireless, telephone lines, cable network, cellular, wide-area network, fax, etc.), and the general nature of the data transmitted. It is understood that the applicant may have limited control over the exact content being transmitted if they only supply the means of transmission.

2.4.5.16 Telecommunication-related services

Generally, services that include the term “telecommunications” (e.g., “telecommunication services”), or that relate to “telecommunication services” (e.g., “communication services”, “information technology services”, “electronic commerce services”), are not considered acceptable without further specification, since “telecommunication” in this context can include any communication at a distance. Therefore, services that either include the term “telecommunications” or relate to “telecommunication services” should specify the nature of the services (i.e., the specific type of communication) and the field of the services (i.e., area of business the applicant provides these services).

For example, the following would be considered acceptable:

“Providing multiple user access to a global computer network”.

In certain circumstances, the statement of services is so specific that the area of business is obvious from the specific type of communication.

For example, the following would be considered acceptable:

“Videoconferencing services”

“Wireless digital messaging services”

“Personal Communication Services” or

“Radio broadcasting services”.

2.4.6 Signature of applicant

A signature is not required for filing a trademark application. The Trademarks Office will also accept trademark applications and correspondence which have been stamped with electronic signatures such as those currently used by a number of firms.

An application by a partnership may be signed by one of the partners if the partners are named. If the partnership comprises general and limited partners, the application may be executed by a partner who can bind the partnership. An application by a corporation may be signed by an officer authorized to sign on its behalf, and the title of the signing officer should be provided. The signature of each of the parties in a joint venture may be affixed to the application.

2.4.7 Nice Classification – Subsection 30(3) of the Trademarks Act

The Nice Classification is an international system for the classification of goods and services established by the Nice Agreement consisting of a list of 34 classes for goods and 11 for services.

While goods or services must be stated “in ordinary commercial terms” and “in a manner that identifies a specific good or service”, even where goods or services are considered to comply with paragraph 30(2)(a) of the Act and section 29 of the Regulations, additional details may be required to group them according to the classes of the Nice Classification.

The Goods and Services Manual should be consulted in order to determine the exact classification of goods or services. For goods or services not found in the Manual, examiners will consult the Class Headings and Explanatory Notes, as well as the General Remarks of the Nice Classification to determine the appropriate class for particular goods or services. 

2.4.7.1 Versions and editions

Any annual revisions to the Nice Classification are published electronically by the World Intellectual Property Office (WIPO) on its website, and enter into force on January 1st of each year. Each of these versions includes all the changes adopted since the previous version. Changes between versions consist of additions, deletions, or modifications of goods and services in a given class. Typically, new versions do not transfer goods or services from one class to another.

New editions of the Nice Classification enter into force every five (5) years, and include all changes adopted annually since the previous edition, as well as all goods or services that were transferred from one class to another.

2.4.7.1.1 Effect of new edition on applications

Any changes incorporated in new editions of the Nice Classification apply only to applications having a filing date on or after the effective date of the edition.

For applications filed prior to the effective date of a new edition, an applicant will have the option of complying with either the edition that was in effect at the filing date of the application or the new edition. However, if the applicant choses the have the new edition apply, the application must conform to the new edition for all the goods or services list in the application. In other words, an application cannot have some goods or services conform to the current edition and other goods or services conform of a previous edition. Furthermore, once an applicant chooses to have a newer edition apply, the application may not be amended to use a previous edition.

2.4.7.1.2 Edition applicable to amendments to group the goods or services of registrations

When a registered owner amends a registration to group goods or services according to the Nice Classification, either voluntarily or in response to a notice issued by the Registrar under subsection 44.1(1) of the Trademarks Act, the application must comply with the edition of the Nice Classification in force on the date of the amendment.

2.4.7.2 Grouping goods and services according to the Nice Classification

Goods or services that could have a number of uses should generally be classified in a single class according to their primary function. If goods or services are normally in a particular class, applicants cannot obtain registration in another class merely by identifying a use or purpose for which the goods or services could then fall into another class or classes.

For example, “essential oils” are classified in Class 3. This cannot be in Class 1 even if the applicant indicates that it is used in the manufacture of other finished products. An “essential oil” is always placed in Class 3 regardless of its ultimate use.

However, if it can be shown that goods or services could have a number of uses, then two or more classes could be appropriate. The statement of goods or services must clearly indicate the basis for the multiple Nice classification with language that is appropriate to the respective classes.

For instance, the identification of “clock radios” could be classed in Class 9 with respect to “radios” and “Class 14” with respect to clocks. Examiners should not question the classification by an applicant as long both indicated classes are correct, or the individual goods or services are in an appropriate class. In this case, either Class 9 or 14 or both would be appropriate.

However, where applicants have not indicated an appropriate class, examiners will need to request confirmation.

For example, if the “clock radio” is primarily a radio which incorporates a clock (in Class 9) or if it is primarily a clock which incorporates a radio” (in Class 14), a “clock radio” cannot be placed in any other class.

Services are typically classified according to the branches of activities and their field of use. However, certain services can be placed in multiple classes on the basis of the purpose for which the services activity is rendered. In those cases, the purpose of the activity will determine classification.

For example, the term “business planning” would normally be in Class 35, but if it concerns any financial aspect of “business planning” then it could be placed in Class 36.

Since the Goods and Services Manual accepts “business planning” as acceptable, examiners will not question the services if the applicant has placed “business planning” in Class 35.

Where the applicant has not indicated an appropriate class, examiners will request an applicant confirm the purpose for which the service is being rendered.

For example, an examiner will require further clarification of the services if an applicant places “business planning” in Class 36, as it will be necessary for the applicant to identify the type of business planning being done to justify its placement in this class, such as “business planning, namely, investment planning”.

2.4.7.2.1 Material composition

As mentioned above, a finished product is typically classified according to its function and purpose. However, if a statement of goods is specific, but the goods could be placed in more than one class depending on the material composition, then the applicant should identify the material composition of the good.

For example, while the goods “statues” are considered to be in ordinary commercial terms for specific goods, they must be further defined in order to be grouped into the appropriate class. The classification of goods such as “statues” will depend upon its material composition. For example, “statues of non-precious metal” in Class 6; “statues of precious metal” in Class 14; statues made of wax, wood, plaster, or plastic would fall into Class 20; and “statues made of glass or porcelain” in Class 21.

However, where an item is made for a particular industry, despite the fact that knowledge of that industry would indicate that the goods would be made from various materials, the precise material composition may not be required. For instance, structural parts of an automobile can be made of metal or plastic, but an examiner would not question the material composition of the parts, since structural parts for automobiles would be placed in Class 12.

2.4.7.2.2 Reference to other classes

Statements such as “transport services of all goods in Classes 32 and 33” or “computer software in the field of services in Classes 41 and 45” are not acceptable. While “transport services” and “computer software” can be grouped according to the classes of the Nice classification, these statements are not considered to be in ordinary commercial terms for specific goods or services. The applicant must state the goods being covered in Classes 32 and 33, e.g., “food transportation services” and must identify the services in Classes 41 and 45, e.g., “computer software for computer virus protection”.

The exclusion of other classes, such as “goods not included in other classes”, is also unacceptable since such wording is not considered to be ordinary commercial terms.

2.4.7.2.3 Class and context

In some cases, the context of the goods or services within a particular class may serve to clarify an otherwise unacceptable statement of goods or services. When a statement of goods or services includes a term that has multiple meanings, the class in which it is placed can aid an examiner to determine the meaning of the good or service.

For example, the statement “pants, jeans and mufflers” in Class 25 would not require further clarification as the class and context serves to indicate that the applicant is seeking registration for clothing and not for engine mufflers in Class 7.

However, if the applicant simply listed the goods “mufflers” alone, this statement is void of context and will need to be redefined. Once redefined, the examiner will then be in a position to determine if the applicant has placed “mufflers” in the appropriate class. If the classification is incorrect, the examiner will inform the applicant that the classification is incorrect.

The goods “skin lotions” are understood to mean cosmetics in Class 3 and are therefore not medicated. However, if the goods are medicated, the “skin lotions” must be further defined to justify their placement in Class 5.

Lastly, care must be taken concerning the scope of goods or services when viewed in the context of the class. For example, an application for various articles of “clothing” in Class 25 would not include “articles of clothing for protection against accidents” in Class 9. Similarly, an application for various types of “cases” in Class 18 could not include within its scope “violin cases” in Class 15.

2.4.7.2.4 Kits, gift baskets and goods sold as a unit

Goods such as “kits”, “gift baskets” and goods described as being “sold as a unit” must comprise goods belonging to a single class.

The Office classifies “kits” according to their purpose, e.g., ”nail care kits” in Class 3, “first-aid kits” in Class 5, “sewing kits” in Class 26 and “Easter egg colouring kits” in Class 28.

Accordingly, “kits” that have no stated purpose need to list the items of which the kit is composed. Moreover, if a kit having no stated purpose is composed of goods that can be classified in various classes, the applicant must list each good under its appropriate class.

The same process for “kits” should be applied to the classification of “gift baskets”. For example, “gift baskets of fresh fruits” will be placed in Class 31, the Class which contains fruit. However, for “gift baskets containing cheese, crackers and wine”, the applicant would have to list each good under its appropriate class, e.g., ”gift baskets containing cheese” in Class 29, “gift baskets containing crackers” in Class 30, and “gift baskets containing wine” in Class 33.

Similarly, goods comprising items that are “sold as a unit” must comprise goods belonging to a single class, for example, ”computer software for tax preparation and electronic instructional manuals sold as a unit” would be placed in Class 9.

Acceptable Nice Classes for kits, gift baskets and items sold as a unit can be found in the Goods and Services Manual.

2.4.8 Priority – Section 34 of the Trademarks Act

Also see the practice notice entitled “Priority Claims”.

Under the terms of the Paris Convention, an applicant (or successor-in-title) who is a citizen or national of, or domiciled in, a country of the Union, or has a real and effective industrial or commercial establishment in a country of the Union, may file an application for the registration of a trademark in Canada, and may claim as the filing date the date they filed an application in or for a Union country for the same or substantially the same trademark for use in association with the same kind of goods or services.

2.4.8.1 Application requirements

In accordance with subsection 34(1) of the Trademarks Act, in order for an applicant to be entitled to priority in Canada based on an earlier-filed application, a request setting out the date and country of filing of the earlier application must be filed with the Registrar within a period of six months after the date on which the earliest application was filed. Such a request for priority may be filed in one of the following ways:

  1. by including the request in an initial application, provided that the application is filed within the above-noted six-month period;
  2. by amending an application to include the request, provided that the amendment is made within the six-month period; or
  3. by filing a separate request in respect of an application at any time within the six-month period.

The Office will permit the request for priority to be amended to correct an error at any time within the six-month period of time. After the expiry of the six-month period of time, no amendment will be permitted to the date, country, or goods or services indicated in the request since it is considered that such an amendment would be inconsistent with subsection 34(1) of the Act.

Subsection 34(1) of the Act does not require that a priority request include the number of the earlier application. However, the Office considers that it is highly desirable for it to be able to make available to the public either the number of, or a copy of, the earlier application. Accordingly, where a priority request does not include the number of the earlier application, the Office will, pursuant to subsection 34(2) of the Act, require the applicant to either provide the Office with the number or submit a certified copy of the earlier application.

Should an error be made in indicating the number of the earlier application, the Office will permit the number to be corrected at any time before registration. Since subsection 34(1) of the Act does not require the request to include the number, the Office considers that an amendment of the number is permitted in accordance with subsection 35(1) of the Regulations.

For the purposes of the priority request referred to in paragraph 34(1)(a) of the Act, the Office does not consider there to be any requirement to identify the specific goods or services in respect of which priority is claimed. Rather, it is sufficient that the request indicates that the priority application was filed for registration of the same or substantially the same trademark for use in association with the same kind of goods or services.

However, if an applicant chooses to limit the priority claim to goods only, to services only, or to specific goods or services, the limitations to the goods or services covered by the priority claim may only be made within the above-noted six month period. After the expiry of the six-month period, no amendment to remove any such limitation will be permitted since this would be considered to be the making of a new request for priority outside of the time limits permitted by paragraph 34(1)(a).

2.4.8.2 Withdrawing a priority request

Pursuant to subsection 33(2) of the Regulations, a request for priority may be withdrawn by filing a request to that effect before the application is advertised under subsection 37(1) of the Act.

2.4.8.3 Dies Non

In accordance with subsection 66(1) of the Trademarks Act, any time limit that expires on a day when the Trademarks Office is closed for business is deemed to be extended to the next day when the Office is open for business. All persons are entitled to these extensions regardless of their place of residence or of the designated establishment to which documents are delivered.

For example, if the six-month period for a priority claim falls on a Saturday and the following Monday is a statutory holiday, the applicant will be given until the Tuesday to file the trademark application and include the appropriate priority claim.

Since section 66 of the Act applies to any day the Office is closed (and not just statutory holidays) another example is if the six-month period falls on a Sunday, the applicant will be given until Monday to file the trademark application with a priority claim.

However, if the applicant would like to amend the priority request in the initial application, it is the examiner's responsibility to properly apply the Office practice with respect to priority claims.

2.4.8.4 Force Majeure

Also see the practice notice entitled “Extensions of Time due to Force Majeure for Priority and Renewal.

Subsection 34(5) of the Trademarks Act permits an applicant to apply for an extension of time to file an application for registration having a claim to priority:

An applicant is not permitted to apply under section 47 for an extension of the six-month period referred to in paragraph (1)(a) until that period has ended, and the Registrar is not permitted to extend the period by more than seven days.

An applicant may apply for an extension of time to file an application referred to in paragraph 34(1)(a) of the Act only after the time limit has passed. Therefore, only a request under subsection 47(2) of the Act is applicable. The applicant must pay the prescribed fee (see section 14 of the Trademarks Regulations and item 1 of the Schedule) as well as explain the reason(s) why it could not do the act within the prescribed period. Evidence that the event has occurred is not required so long as the event was clearly described in the request.

If the Registrar grants the extension of time, the period may only be extended by a maximum of seven days.

Requests for these types of extensions of time must be addressed as follows and sent by mail or fax:

REQUEST FOR EXTENSION OF TIME ON FORCE MAJEURE

c/o Deputy Director, Examination Division

Trademarks Office

Canadian Intellectual Property Office

50 Victoria Street

Gatineau, Quebec K1A 0C9

Fax: 819-953-2476.

While not explicitly stated as such, subsection 34(5) provides relief measures for applicants to extend time limits due to a “force majeure” event. Force majeure (often called “act of God”) is a legal concept that allows a party to suspend its obligations when certain circumstances beyond its control arise, making performance of its obligations impossible. The Supreme Court of Canada defined an “act of God,” at least as it pertains to contract law, in Atlantic Paper Stock Ltd. v. St. Anne-Nack, [1976] 1 SCR 580 at 583 as an “event, beyond control of either party, [that] makes performance impossible.” The Court described the uncontrollable character of the event as being something “unexpected” and “beyond reasonable human foresight and skill.” In addition to the unexpected character of an event, the event must also “strike at the root” of the reason why the obligation cannot be met. When considering the occurrence of a force majeure event, courts are not interested in the occurrence of the event per se, but the specific effect of the event on the obligations of the parties. In addition to “acts of God,” force majeure events can also include political or medical events.

Examples of force majeure events include, but are not limited to:

2.4.9 Standard characters – Section 31 of the Trademarks Act

Also see the practice notice entitled “Standard Character Trademarks”.

A standard character trademark contains a combination of prescribed letters, numbers and symbols without any claim to a particular font, size or colour.

Section 31 of the Trademarks Act sets out that an application for a standard character trademark must include:

The Office has created a standard character set that lists the letters, numerals, punctuation marks, diacritics and typographical symbols that may be used when filing a standard character trademark. The standard character set is available on the practice notice entitled “Standard Character Trademarks”.

Furthermore, paragraph 30(e) of the Trademarks Regulations requires that the representation of a trademark in standard characters must be in black on a white background.

If an applicant requests registration of a trademark that appears to be in standard characters but (i) does not include or reference a standard character statement, or (ii) contains characters not in the standard character set, the trademark will be treated as a design trademark. In such cases, the trademark will be scanned and represented as filed.

Pursuant to paragraph 35(2)(e) of the Trademarks Regulations, an application cannot be amended to add or remove a statement in paragraph 31(b) of the Act, namely that the trademark consists of standard characters, unless the application has not been advertised and the trademark remains substantially the same.

2.4.10 Non-traditional trademarks

Also see the practice notice entitled “Non-traditional Trademarks”.

Paragraph 30(2)(c) of the Trademarks Act provides that an application is required to contain a representation or description, or both, the permits the trademark to be clearly defined and section 30 of the Trademarks Regulations lists the requirements that are prescribed. The following sections summarize the application content requirements for non-traditional trademarks consisting in whole or in part of a sound, hologram, moving image (motion), scent, taste, colour per se, a three-dimensional shape, a mode of packaging goods, a texture, or a positioning of a sign.

2.4.10.1 Sound

Pursuant to paragraph 31(e) of the Trademarks Regulations, if the trademark consists in whole or in part of a sound, a statement to that effect must be included in the application.

For a trademark containing or consisting of a sound to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a clear and concise description as well as an electronic recording of the sound. Electronic recordings must not contain any looping or repetition of the sound, nor include any sounds that do no form part of the trademark. A visual representation of the trademark may be included in the application but is not required.

An example of an acceptable description of a sound trademark would be:

The trademark consists of the sound of a lion's roar, the audio representation of which is included in the application.

2.4.10.2 Hologram

A hologram is defined as a three-dimensional picture made by laser light reflected onto a photographic substance without the use of a camera. Although holograms can be a singular image, they can also show different images when viewed from different angles.

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a hologram, a statement to that effect must be included in the application.

For a trademark containing or consisting of a hologram to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a visual representation in the form of one or more still images, sufficient in number and clarity, to demonstrate the holographic effect in its entirety. The application must also include a clear and concise description of the visual effect when the hologram is viewed from different angles.

The application may also include a digital representation of the trademark, in the form of a moving image (animation) clip, that demonstrates the holographic effect in its entirety.

If the visual representation depicts different views of the same trademark, a statement to that effect must be included in the application to comply with section 27 of the Regulations.

If colour is claimed as a feature of the hologram, the application must also contain a statement to that effect and the visual representation(s) must be in colour. If colour is not claimed as a feature, the visual representation(s) must be in black and white.

An example of an acceptable description of a hologram trademark without a claim to colour(s) would be:

The trademark consists of a hologram of a dove in flight. The visual representation included in the application depicts the full range of the holographic effect.

An example of an acceptable description of a colour hologram trademark would be:

The trademark consists of a hologram of a map of the world as depicted in the visual representation. The trademark has a holographic rainbow colour effect and the applicant claims the colours red, orange, yellow, green, blue, indigo, violet as a feature of the trademark.

2.4.10.3 Moving image (motion)

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a moving image, a statement to that effect must be included in the application.

For a trademark containing or consisting of a moving image to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a electronic representation of the trademark, in the form of a moving image (animation) clip, that demonstrates the full range of the moving image. The animation clip must run only once and not repeat or loop. A visual representation which consists of a static frame-by-frame representation of the motion will only be accepted if it is submitted with the animation clip. The application must also include a clear and concise description of the whole visual effect of the animation from start to end.

If colour is claimed as a feature of the animation, the application must also contain a statement to that effect and the visual representation(s) must be in colour. If colour is not claimed as a feature, the visual representation(s) must be in black and white.

An example of an acceptable description of a moving image trademark would be:

The trademark consists of a moving image of a book being opened and a page turned, as shown in the representation included in the application.

2.4.10.4 Scent

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a scent, a statement to that effect must be included in the application.

For a trademark containing or consisting of a scent to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a clear and concise description of the scent.

Examples of acceptable descriptions for scent trademarks include:

The trademark consists of the scent of strawberry.

The trademark is a coconut scent diffused throughout a retail store setting.

2.4.10.5 Taste

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a taste, a statement to that effect must be included in the application.

For a trademark containing or consisting of a taste to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a clear and concise description of the taste.

An example of acceptable descriptions of a taste trademark would be:

The trademark consists of the taste of black licorice.

2.4.10.6 Colour per se

Pursuant to paragraph 31(g) of the Regulations, if the trademark consists of a single colour or combination of colours without delineated contours, a statement to that effect must be included in the application.

For a trademark consisting of colour per se to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a description that provides the common name of the colour(s). A visual representation consisting of a square swatch in each colour is also required.

The application must not include a statement that colour is claimed as a feature of the trademark as colour is the trademark and not merely a feature thereof.

An example of acceptable descriptions of a colour per se trademark would be:

The trademark consists exclusively of the colour red without delineated contours, as shown in the visual representation.

2.4.10.7 A three-dimensional shape

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a three-dimensional shape, a statement to that effect must be included in the application.

For a trademark containing or consisting of a three-dimensional shape to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a visual representation. The representation should only include those portions of the three-dimensional object that form part of the trademark. However, if the representation includes elements that do not form part of the trademark (e.g. in order to further clarify the trademark), they must be shown in dashed lines and the application must include a statement that the portions of the representation shown in dashed lines do not form part of the trademark.

If the visual representation depicts different views of the same trademark, a statement to that effect must be included in the application to comply with section 27 of the Regulations.

If colour is claimed as a feature of the three-dimensional shape, the application must include a statement to that effect and the visual representation(s) must be in colour. If colour is not claimed as a feature, the visual representation(s) must be in black and white.

2.4.10.8 Mode of packaging goods

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a mode of packaging goods, a statement to that effect must be included in the application.

For a trademark containing or consisting of a mode of packaging goods to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must, in addition to a clear and concise description, include a visual representation.

If the visual representation depicts different views of the same trademark, a statement to that effect must be included in the application to comply with section 27 of the Regulations.

If colour is claimed as a feature of the mode of packaging goods, the application must include a statement to that effect and the visual representation(s) must be in colour. If colour is not claimed as a feature, the visual representation(s) must be in black and white.

An example of acceptable descriptions of a mode of packaging goods trademark would be:

The trademark is a mode of packaging goods and consists of the way the goods are wrapped in green cellophane, as depicted in the drawing. The colour green is claimed as a feature of the trademark.

2.4.10.9 Texture

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of a texture, a statement to that effect must be included in the application.

For a trademark containing or consisting of a texture to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must include a clear and concise description of the tactile qualities of the trademark. The application may include a visual representation of the texture if it would add clarity to the description.

If the visual representation depicts different views of the same trademark, a statement to that effect must be included in the application to comply with section 27 of the Regulations.

If colour is claimed as a feature of a texture trademark, the application must include a statement to that effect and the visual representation(s) must be in colour. If colour is not claimed as a feature, the visual representation(s) must be in black and white.

Examples of acceptable descriptions of a texture trademark include:

The trademark consists of the texture of 100 grit sand paper on the surface of the associated goods.

The trademark consists of the texture of fine leather on the surface of the bottle as depicted in the visual representation.

The trademark consists of the waffle type texture as applied to the surface of toilet paper as depicted in the visual representation.

2.4.10.10 Positioning of a sign

Pursuant to paragraph 31(e) of the Regulations, if the trademark consists in whole or in part of the positioning of a sign, a statement to that effect must be included in the application.

For a trademark containing or consisting of the positioning of a sign to be clearly defined pursuant to paragraph 30(2)(c) of the Act, the application must, in addition to a description, include a visual representation of the trademark.

Where the applicant is seeking registration of the position of a sign on a three-dimensional object, any representation must show the three-dimensional object in dashed lines, and the application must include a statement that the object shown in dashed lines does not form part of the trademark but is included merely to show the positioning of the sign.

Where the applicant is seeking registration of the position of colour(s) as applied to the whole or portions of the surface of a three-dimensional object, the application must include a statement that colour is claimed as a feature of the trademark, and the visual representation(s) must be in colour. This is required because in this situation the colour is considered as a feature of the positioning of the trademark.

If the visual representation depicts different views of the same trademark, a statement to that effect must be included in the application to comply with section 27 of the Regulations.

An example of acceptable descriptions of a position trademark would be:

The trademark consists of the position of a fanciful horse design applied to a three-dimensional bottle, as shown in the visual representation. The bottle shown in dashed lines does not form part of the trademark but is included merely to show the positioning of the design.

The trademark consists of the position of a v-shaped stitching design as applied to a pocket, as shown in the visual representation. The pocket shown in dashed outline does not form part of the trademark but is included merely to show the position of the trademark.

2.4.10.11 Combinations

Applications for trademarks that consist of a combination of two or more trademark types must meet the minimum requirements for each trademark type. For example, an application for a trademark that consists of both a sound and a moving image must meet the requirements for a sound trademark as well as the requirements for a moving image trademark.

2.4.10.12 Acceptable formats of electronic files

Applications filed by paper may attach electronic representations of images, animations, or sounds provided on a CD, DVD, or USB stick. Alternatively, applicants who file by paper may include still images of the trademark on separate pages; the images must be clearly labeled to indicate the order in which they appear in the visual representation of the trademark.

When providing electronic files containing multiple still visual representations, applicants may provide either one image per file or all images in one file. If one image per file is provided, only the first image provided will appear in correspondence from the Office.

The following provides a summary of the requirements when providing audio and visual representations in electronic format whether an application is filed by paper or online.

File content

File extension

Max representations

Max file size

Sound recording

.MP3

1

10 MB

Moving image

.MP4

1

10 MB

Still image

.PNG / .TIF / .JPG / .GIF

No maximum

10 MB

2.5 Certification marks — Sections 23, 24 and 25 and Paragraph 30(2)(b) of the Act

2.5.1 Definition of Certification Mark

A certification mark is defined in section 2 of the Trademarks Act as “a sign or combination of signs that is used or proposed to be used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard from those that are not of that defined standard, with respect to

  1. the character or quality of the goods or services,
  2. the working conditions under which the goods are produced or the services performed,
  3. the class of persons by whom the goods are produced or the services performed, or
  4. the area within which the goods are produced or the services performed; from goods or services that are not of that defined standard”.

2.5.2 Owner not engaged

According to paragraph 30(2)(b) and subsection 23(1), a certification mark may be registered only by a person who is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used.

The owner of a certification mark may be engaged in activities other than certification, such as the sale of goods or the performance of services, other than those covered by the certification mark. The owner may use the same trademark as a certification mark on goods and as an ordinary trademark on services, or vice versa. However, the applicant cannot use the same trademark to both indicate defined standards for goods or services and to distinguish those same goods or services from the goods or services of others.

2.5.3 Example of certification mark

An example of a certification mark is one registered by a trade association to identify the goods or services of its members. For example, the certification mark of the Association of Professional Engineers of Ontario certifies to the purchaser of engineering services that those services have been performed by qualified professional engineers. The Association of Professional Engineers of Ontario is the owner of the certification mark and is responsible for the quality of services performed. The professional engineer who performs the services is not the owner of the certification mark but is authorized by the owner to use the mark in association with the services rendered.

2.5.4 Descriptive of place of origin — Section 25

An application for registration of a certification mark must satisfy most of the same registrability requirements under section 12 of the Act as an application for an ordinary trademark. However, a certification mark which is descriptive of the place of origin of the goods or services is registrable if:

  1. the applicant is the administrative authority of a country, state, province, or municipality, including or forming part of the area indicated by the mark; or
  2. is a commercial association having an office or representative in such area.

The owner of any certification mark registered under section 25 of the Act shall permit the use of the mark in association with any goods or services produced or performed in the area of which the mark is descriptive.

2.5.5 Defined standard

Paragraph 30(2)(b) of the Trademarks Act requires an application for the registration of a certification mark to contain particulars of the defined standard that the use of the certification mark is intended to indicate.

In view of the decision of the Trademarks Opposition Board in Molson Breweries v. Labatt Brewing (1996), 69 C.P.R. (3d) 274, an application for the registration of a certification mark does not comply with the requirements of paragraph 30(2)(b) of the Act unless the application sets out in a meaningful way particulars of the defined standard. To be meaningful, the particulars should allow a member of the public to ascertain the precise nature of the defined standard. For example, an acceptable defined standard can include details on the qualifications required from the persons producing the goods or providing the services, or the norms of quality or performance or production of the goods or services.

Where the details of the defined standard are very lengthy, the applicant must make a copy available to the public and include in the application the name and a summary of the relevant portions of the relevant document(s). As stated in Molson Breweries v. Labatt Brewing (1996), 69 C.P.R. (3d) 274 at 283 (T.M.O.B):

It would not be imposing too onerous a burden on an applicant to furnish a meaningful “defined standard” when the certification mark application is initially filed or to update the defined standard as the need arises. Further, easy access to the standard which a certification mark symbolizes would appear to be in the public interest. Presumably, the particulars of the defined standard need not be set out in its entirety in the trademark application as long as reference is made to the titles of published manuals, or the like, where the standard may be found.

It is not acceptable for the applicant to provide a website address where the defined standard may be viewed electronically since such information may not always be available to public inspection.

Where the details of the defined standard are very lengthy and the applicant does not wish to submit a paper copy, the Office will accept an electronic version of the defined standard in an acceptable format provided that a summary of the standard is included in the application. It is the responsibility of the applicant to ensure that the electronic version of the defined standard is submitted in such a format that is easily readable and accessible to the public in accordance with subsection 29(1) of the Act.

Note: in all cases, a brief summary of the standard will need to be included in the application. A mere reference to another document is not acceptable.

2.5.6 Amending Applications to and from Certification Marks

See section 2.8.6 Amending an application to/from a certification mark in this Manual.

2.6 Applications to extend the statement of goods or services – paragraph 41(1)(c) and subsection 41(2) of the Act

Paragraph 41(1)(c) of the Trademarks Act provides that the registered owner of a trademark may amend the statement of the goods or services in respect of which the trademark is registered.

Subsection 41(2) of the Act provides that an application to extend the statement of goods or services in respect of which a trademark is registered has the effect of an application for registration of the trademark in respect of the goods or services specified in the application for amendment. In other words, an application to extend the statement of goods or services of a trademark registration will be examined as a new application.

2.6.1 Conversion to an ordinary trademark application

There are occasions when an applicant may wish to convert an application to extend the statement of goods or services to an ordinary trademark application.

In such a situation, a new application number will be assigned to the application. The new-ly created application will be granted the same filing date as the application to extend.

Examiners must ensure that the ordinary application replacing the extension of goods or services application contains the same trademark, statement of goods or services, and name and address of the applicant.

The Office will also permit the applicant to revert to an ordinary application for registration if the registration on which an extension of goods or services application is dependent becomes expunged or cancelled.

If the applicant requests this change, a revised application must be filed, deleting reference to the registration on which the extension application was based.

2.6.2 Affidavit of continuous use

For trademarks previously registered pursuant to subsection 12(2) of the Trademarks Act, section 29 of the Unfair Competition Act or Rule 10 of the Trade Mark and Design Act, where the registration of the trademark which is the subject of an application to extend the goods or services is contrary to either paragraphs 12(1)(a) or (b), the Registrar does not require a showing of acquired distinctiveness pursuant to subsection 32(1) if the goods or services in respect of the application to extend are in the same class as the goods or services covered by the registration. In such a case, the Office accepts an affidavit of continuous use.

The evidence must establish that use of the trademark has been continuous in association with the goods or services originally registered, from the date of the initial evidence establishing secondary meaning until the date of application to extend. The evidence should also show use of the trademark in respect of the extended goods or services prior to the date of application to extend.

2.7 Divisional applications

2.7.1 Definitions

An original application is an application for the registration of a trademark which has been limited under subsection 39(1) of the Trademarks Act for the purpose of filing a divisional application.

A divisional application is an application for the registration of a trademark which covers some or all of the goods or services which were limited from an original application. A divisional application can also be divided, whereupon it becomes an original application for the divisional application derived from it.

2.7.2 Why divide an application?

An applicant may choose to file a divisional application for reasons which include, but are not limited to, the following:

2.7.3 Filing a divisional application prior to advertisement

Under section 39 of the Trademarks Act, an applicant may limit an application to one or more of the goods or services that were within its scope and file a divisional application for the registration of the same trademark. An applicant may also divide a divisional application, in which case section 39 of the Act applies as if that divisional application were an original application.

A divisional application may only be filed if the original application is active (i.e. not abandoned, refused, or registered).

When filing a divisional application, the applicant must reference the application number of the original application, if known, and clearly indicate that it is a divisional application.

The scope of the goods or services that can be divided will depend on where the application is in the registration process. If the original application has not been advertised at the date the divisional application is filed, the goods or services that can be divided must be within the scope of the original application on its filing date (without taking into account a claim to priority). If the original application has been advertised, the goods or services that can be divided must be within the scope of the original application on the day on which the divisional application is filed.

A divisional application is considered a separate application, including with respect to the payment of any fees. However, if the filing fees listed under item 7 of the Tariff of Fees have been paid on the original application, they are considered to have been paid on any divisional application. The end result, then, is that no additional application fee is due on a divisional application. As well, the divisional application’s filing date is deemed to be the original application’s filing date.

The Registrar will send the applicant a notice to confirm the creation of the divisional application and provide the new application number.

2.7.4 Steps deemed to have been taken

Subject to the exceptions listed in section 40 of the Trademarks Regulations, any action taken in respect of the corresponding original application or original Protocol application, up to and including the day on which the divisional application is filed, is deemed to be an action taken in respect of the divisional application.

Example 1

If an examiner’s report has issued on the original application before a divisional application was filed, the deadline to respond to the report will also apply to the divisional application and the Office will not re-issue a new examiner’s report.

Example 2

If a transfer has been requested on the original application before a divisional application was filed, but could not be processed due to missing information, the transfer will be deemed to have been requested on the divisional application. Once the missing information has been provided, the request will be processed on both the original and divisional applications. Please note that the fee listed in item 8 of the Tariff of Fees will have to be paid on each divisional application.

2.7.5 Filing a divisional application after advertisement

An application may also be divided any time after advertisement but before registration so long as the goods and services divided out are within the scope of the original application on the day on which the divisional application is filed (see paragraph 39(1)(b) of the Act). Please refer to the Practice Notice published by the Trademarks Opposition Board entitled “Divisional Applications in Opposition” for more information on dividing an application after the application has been opposed.

2.7.6 Applications filed prior to June 17, 2019

Applications filed prior to the coming-into-force of the amended Trademarks Act can be divided. For more information on the applicable registration fee, please refer to the “Guide to Transitional Provisions of Bill C-31”.

2.7.7 Mergers

Under paragraph 41(1)(f) of the Trademarks Act, if a trademark that is the subject of an application that has been previously divided proceeds to registration, it may be merged with other registrations of the trademark that stem from the same original application and where the trademarks are the same and have the same registered owner.

2.7.8 Dividing an application to extend the statement of goods or services

Applications filed under subsection 41(2) of the Act to extend the statement of goods or services in respect of which a trademark is registered may be divided. However, upon registration, the divisional application will be merged automatically with the original registration it was intended to extend and not the original application it was divided from.

In the case of an application in respect of a registered trademark that is a word mark or a distinguishing guise, the divisional application should, at the time of filing, include a statement under paragraph 31(b) of the Act to the effect that the applicant wishes the trademark to be registered in standard characters or paragraph 31(e) of the Regulations that the trademark consists in whole or in part a three-dimensional shape or mode of packaging goods, as applicable. Consideration should be given to paragraph 35(2)(e) of the Regulations since it will only be permissible to add or delete these statements if the application has not been advertised and the trademark remains substantially the same.

Moreover, when a divisional application which stems from an original application to extend the statement of goods or services proceeds to registration and is merged automatically, the Office will change the “type” of the registered trademark to a standard character, a three-dimensional shape or a mode of packaging goods, as applicable.

2.7.9 Pending assignment

Should there be a pending transfer of any of the registrations that stem from the same original application, the request to merge will only be processed once the transfer is registered to ensure that all registrations are in the name of the same registered owner.

2.8 Amendments to an application

2.8.1 Changing the identity of the applicant

Where a trademark application incorrectly identifies the applicant’s name, the applicant may, if the situation meets the exception listed in paragraph 35(2)(a) of the Trademarks Regulations, request a correction to the error. The following are examples of the most common errors made when identifying the applicant:

  1. The application identifies the applicant as “ABC Limited” instead of “ABC Inc.”, or vice versa; “XYZ of Canada Ltd.” instead of “XYZ Ltd.”, or vice versa. The office will accept the change of the entity description
  2. The application is filed in the old name of the applicant when a change of name occurred prior to the filing date of the application. The Office will accept this correction upon receipt of correspondence setting out the details of the error and a revised application which correctly identifies the applicant. This situation is not contrary to paragraph 35(2)(a) of the Regulations as the actual “identity” of the applicant has not changed.

Note: The Office will amend an application to reflect a change of name of the applicant upon receipt of a written request; no fee is required. As a general rule, there is no requirement to provide the Office with evidence of a change of name. If the name change is a result of a merger, amalgamation or a change in corporate status, the Office will require some evidence that details the circumstances in which the name changed. Non-notarized extracts of corporate registers or copies of the certificate of merger/amalgamation will suffice as evidence of the change in corporate status or a change of name resulting of a merger/amalgamation.

  1. When an application identifies an applicant that does not have a legal entity descriptor, the Office will accept a request to correct the applicant’s identity to add one (e.g. from “Farm Foods” to “Farm Foods Ltd.” or to “Mary Smith trading as Farm Foods”.

2.8.2 Changing the representation or description of the trademark

Pursuant to paragraph 35(2)(b) of the Trademarks Regulations, an application may not be amended to change the representation or description of the trademark, unless the application has not been advertised and the trademark remains substantially the same.

2.8.3 Amendments to goods or services

Subject to the exceptions listed in paragraph 35(2)(c) of the Trademarks Regulations, an application may be amended to change the statement of goods or services. An application may not be amended to broaden the scope of the statement of goods or services beyond the scope of

  1. that statement on the filing date (determined without taking into account any claim to priority) of the application; and
  2. the narrower of that statement as advertised and that statement as amended after advertisement.

2.8.4 Adding a divisional application indication

When filing a divisional application, the applicant must reference the number of the original application, if known, and clearly indicate that it is a divisional application. Moreover, pursuant to paragraph 35(2)(d) of the Trademarks Regulations, an application may not be amended to add an indication that it is a divisional application.

2.8.5 Adding or deleting certain statements

In view of paragraph 35(2)(e) of the Trademarks Regulations, an application must not be amended to add or delete a statement referred to in paragraph 31(b) of the Act or paragraph 31(e), (f) or (g) of the Regulations, unless the application has not been advertised and the trademark remains substantially the same.

Paragraph 31(b) of the Act requires an applicant to include in their application a statement to the effect that they wish the trademark to be registered in standard characters.

Paragraph 31(e) of the Regulations requires an applicant to include in their application, if the trademark consists in whole or in part of a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture or the positioning of a sign, a statement to that effect.

Paragraph 31(f) of the Regulations requires an applicant to include in their application, if colour is claimed as a feature of the trademark, a statement to that effect, along with the name of each colour claimed and an indication of the principal parts of the trademark that are in that colour.

Paragraph 31(g) of the Regulations requires an applicant to include in their application, if the trademark consists exclusively of a single colour or a combination of colours without delineated contours, a statement to that effect, along with the name of each colour.

2.8.6 Amending an application to/from a certification mark

In view of paragraph 35(2)(f) of the Trademarks Regulations, an application for a regular trademark may be converted to an application for a certification mark (or vice versa) by adding or deleting the statement referred to in paragraph 31(h) of the Regulations, but only prior to the application being advertised.

This is consistent with the decision of Mister Transmission (International) Ltd. v. Registrar of Trade Marks (1978), 42 C.P.R. (2d) 123 (F.C.T.D.), at 126-127:

While the registered mark and the certification mark are used for quite different purposes, the first for the purpose of distinguishing the services of the owner of the mark from services performed by others, and the other for the purpose of distinguishing services of the defined standard from services that are not of such a defined standard and they are thus marks of different categories or types, both are included in the definition of “trade mark” in s. 2 of the Act and there is nothing in the Act, as there was in para. 28(1)(b) 3 of the Unfair Competition Act, 1932 (Can.), c. 38 and also R.S.C. 1952, c. 274, which prohibits a person from owning registered marks of both types so long as he complies with s-s. 23(1) and is not engaged in the performance of services of the kind in association with which the certification mark is used. If he is not so engaged, the fact he is on the register as being the owner by assignment of a registered trade mark with which the certification mark is confusing appears to me to be irrelevant to his right to registration of the certification mark.

And at 129:

Subsection 23(2) appears to remedy this by providing that use by a licensee of the owner shall be deemed to be use by the owner. But plainly, such use is not deemed to be equivalent to engaging in the manufacture, sale, leasing or hiring of wares or the performance of services. If it were, the owner would be disqualified by s-s. 23(1), with the result that no one could ever qualify to register a certification mark.

And further, at 129-130:

But, in my opinion, it does not follow that, because a trade mark is used by a registered user and because, for the purposes of the Act, that use has the same effect as use by the registered owner, the registered owner must be deemed to be engaged in the manufacture, sale, leasing or hiring of the wares or the performance of the services in association with which the trade mark is used.

3 Search / Confusion

3.1 Purpose of the search

In addition to ensuring that an application complies with the formal provisions of the Trademarks Act and Regulations, examiners also play a role in protecting the rights of other owners and their trademarks. This is accomplished by reviewing the results of a trademark search. The purpose of the search is to determine whether the trademark:

  1. is not entitled to registration under paragraph 37(1)(c) of the Act because it is confusing with a trademark which is the subject of a pending application;
  2. is confusing pursuant to paragraph 12(1)(d) of the Act with a trademark which is registered;
  3. is not registrable in view of paragraph 12(1)(e) because it consists of, or so nearly resembles as to be likely to be mistaken for, a mark which is protected under section 9 of the Act;
  4. is a denomination the adoption of which is prohibited by section 10.1 (see paragraph 12(1)(f)); or
  5. is in whole or in part a protected geographical indication and the application covers wines or spirits not originating in a territory indicated by the geographical indication, or agricultural products or foods belonging to the same category as the agricultural product or food identified by the geographical indication and not originating in a territory indicated by the geographical indication (see paragraphs 12(1)(g), (h) and (h.1)).

If the trademark is confusing with a trademark which is the subject of a pending application, examiners must determine who is entitled to registration and raise an objection on the application of the non-entitled person.

If the trademark is confusing with a registered trademark, an objection must be raised pursuant to paragraph 12(1)(d) of the Act.

If the trademark consists of, or so nearly resembles as to be likely to be mistaken for, a prohibited mark, an objection must be raised pursuant to paragraph 12(1)(e) of the Act.

If the trademark consists of a plant variety denomination, or so nearly resembles a plant variety denomination as to be likely to be mistaken therefore, and the application covers the plant variety or another plant variety of the same species, an objection must be raised pursuant to paragraph 12(1)(f) of the Act.

If the trademark is in whole or in part a protected geographical indication and the application covers wines or spirits not originating in a territory indicated by the geographical indication, or the application covers agricultural products or foods belonging to the same category as the agricultural product or food identified by the geographical indication and not originating in a territory indicated by the geographical indication, an objection must be raised pursuant to paragraph 12(1)(g), (h) or (h.1) of the Act, as applicable.

Note: The Registrar of Trademarks keeps a list of protected geographical indications and, in the case of geographical indications identifying an agricultural product or food, translations of those indications, in accordance with subsection 11.12(1) of the Act.

The search is a key process in the examination of a trademark application. Keeping in mind that registration of a trademark gives an owner an exclusive right to use of that trademark in Canada in respect of the goods or services in association with which it is registered, examiners must be consistent in the manner of consulting the search results.

3.2 Definition of confusion — subsection 6(2)

Subsection 6(2) of the Trademarks Act describes the manner and circumstances in which one trademark would cause confusion with another:

The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

In deciding the question of confusion, Ritchie J. set forth the following criteria in Rowntree Co. Ltd. v. Paulin Chambers Co. Ltd. (1967), 54 C.P.R. 43 at page 47:

It is enough, in my view, if the words used in the registered and unregistered trade marks are likely to suggest the idea that the wares with which they are associated were produced or marketed by the same person.

In Benson & Hedges (Canada) Ltd. v. St-Regis Tobacco Corp. (1968), 57 C.P.R. 1 at page 4, Ritchie J., after reviewing subsection 6(2) stated:

I have italicized the words “would be likely to lead to the inference” as it appears to me to be clear that in opposing an application for registration, the holder of a trade mark which is already registered is not required to show that the “mark” which is the subject of the application is the same or nearly the same as the registered mark, it being enough if it be shown that the use of this mark would be likely to lead to the inference that the wares associated with it and those associated with the registered trade mark were produced by the same company.

In other words, the issue is not confusion between the trademarks themselves, but confusion as to the source of the associated goods or services.

3.2.1 Surrounding circumstances – subsection 6(5)

In determining the likelihood of confusion, examiners must consider all the surrounding circumstances, including the following as listed in subsection 6(5) of the Act:

  1. the inherent distinctiveness of the trademarks and the extent to which they have become known;
  2. the length of time the trademarks have been in use;
  3. the nature of the goods, services or business;
  4. the nature of the trade; and
  5. the degree of resemblance between the trademarks, including in appearance or sound or in the ideas suggested by them..

In Haw Par Brothers International Ltd. v. Registrar of Trade Marks (1979), 48 C.P.R. (2d) 65, Marceau J. stated at page 70:

...[I]n order to determine whether trade marks are confusing within the meaning of the Act, that is, whether their concurrent use is likely to lead a purchaser to believe that the associated products come from the same source, the surrounding circumstances, particularly five major factors, must be taken into account.

In the Pianotist Case, reported in (1906) 23 R.P.C. 774, Parker J., after reviewing the surrounding circumstances which had been the subject of judicial consideration on many occasions, stated at page 777:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those wares. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

In Ortho Pharmaceutical Corp. v. Mowatt & Moore Ltd. (1972), 6 C.P.R. (2d) 161 (F.C.T.D.), wherein Heald J. discussed the “surrounding circumstances” at page 166:

Section 6(5) requires the Court, in determining whether the trade marks are confusing, to consider the particular matter listed in paras. (a), (b), (c), (d) and (e) thereof and also “all the surrounding circumstances”.

An additional “surrounding circumstance” which, in my view I am entitled to consider, is the fact that both of the subject marks have in them an element common to the trade — that is — they both have in them the terminal letters “pak”.

The factors listed in subsection 6(5) are not exhaustive, and do not necessarily receive equal weight. See Bally Schufabriken A.G./Bally's Shoe Factory Limited v. Big Blue Jeans Limited Ltd./Ltée (1992), 41 C.P.R. (3d) 205 at 210 (F.C.T.D.) as well as the comments by Rouleau J. in Leaf Confections Ltd. v. Maple Leaf Gardens Ltd., (1986), 12 C.P.R. (3d) 511 (F.C.T.D.), affirmed (1988), 19 C.P.R. (3d) 331 (F.C.A.):

Nevertheless, it is clear in considering the elements of s-s. 6(5) of the Trade Marks Act, R.S.C. 1970, c. T-10, each element need not be interpreted as having equal weight. A particular case might justify greater significance being given to one criterion over others. As previously stated, I find the respondent’s mark and design to be a strong one, well-known throughout Canada. In such cases the courts have held that the distinction between the wares and the nature of the trade of the two competing marks becomes less important.

3.2.1.1 Paragraph 6(5)(a) — Inherent distinctiveness and extent to which trademark has become known

3.2.1.1.1. Inherent distinctiveness

A trademark which is coined, arbitrary, unique, and not descriptive of the associated goods or services are generally considered inherently distinctive. Case law regarding confusion has asserted that the higher the inherent distinctiveness of a trademark, the larger the scope of protection that should be afforded to that trademark.

For example, a trademark such as KODAK, which is a purely arbitrary word in association with photographic film, possesses more inherent distinctiveness than a trademark such as CORTI-VET in association with a veterinary preparation containing cortisone. In other words, the quality of inherent distinctiveness is easily attributed to the trademark KODAK because, unlike CORTI-VET, KODAK has no suggestive or descriptive properties, nor does it suggest any other relation to the goods associated with it, namely photographic film or photographic equipment.

When it comes to comparing trademarks, examiners are directed to the following from H.G. Fox, Fox on Canadian Law of Trade-marks and Unfair Competition, Fourth Edition, Chapter 8:

If the words are distinctive, in the sense of being invented words, small differences will not be sufficient to distinguish them, whereas if the words are common or descriptive in meaning, they must be taken with their disadvantages. No person is entitled to fence in the common of the English language and words of a general nature cannot be appropriated over a wide area.

The ambit of protection that should be afforded to a common word was discussed in the decision of General Motors Corp. v. Bellows. At the trial level, (1947), 7 C.P.R. 1 at page 8, Cameron J. made the following comments:

In considering whether marks are similar, consideration ought to be given to the nature of the words themselves, and a distinction drawn between a fancy or invented word and an ordinary word in everyday use. In the case of a purely invented word, the scope is very much wider than that of an ordinary word.

On appeal to the Supreme Court of Canada, (1949), 10 C.P.R. 101 at page 115, Rand J. stated the following:

Mr. Fox submitted this basic consideration: that where a party has reached inside the common trade vocabulary for a word mark and seeks to prevent competitors from doing the same thing, the range of protection to be given him should be more limited than in the case of an invented or unique or non-descriptive word; and he has strong judicial support for that proposition: Office Cleaning Services Ltd v. Westminster Window & Gen'l Cleaners Ltd. (1944), 61 R.P.C. 133 at page 135; (1946), 63 R.P.C. 39; Br. Vacuum Cleaner Co. v. New Vacuum Cleaner Co., [1907] 2 Ch. 312 at page 321; Aerators Ltd. v. Tollitt, [1902] 2 Ch. 319.

3.2.1.1.2. Extent to which a trademark has become known

Examiners are limited in their ability to make judgments about the extent to which a trademark has become known in Canada. Generally, where a trademark has become well-known as the distinguishing sign of a particular person, it should be given a wider ambit of protection than one that has not been used or known to the Canadian public.

3.2.1.2 Paragraph 6(5)(b) – Length of time used

Examiners are also limited in their ability to make judgments about the length of time trademarks have been in use. However, it is generally accepted that a trademark which has seen substantial use over a long period of time deserves more protection than a trademark which has seen less use over a short period of time and therefore has been known to a lesser extent.

In United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 at 259-60 (F.C.A.), the Court articulated this criterion in the test of confusion:

The length of time that a mark has been used is obviously a factor which will contribute to confusion on behalf of the consumer in determining the origin of wares or services. A mark that has been in use a long time, versus one newly arrived on the scene, is presumed to have made a certain impression which must be given some weight.

Likewise, in Advance Magazine Publishers Inc. v. Masco Building Products Corp.(1999), 86 C.P.R. (3d) 207 at p.219, the Federal Court found that longstanding prior use of the senior trademark is an important consideration:

In my view, the Chairman of the Opposition Board erred in saying that the use by the respondent of the mark VOGUE in association with door locks and lock hardware could not result in a likelihood of confusion with the well known appellant’s trade mark in the mind of the average consumer. The Opposition Board “seems to have ignored the fact that the respondent was a newcomer entering a field extensively occupied by the appellant and borrowing in so doing the whole of a name already well-established in that very field by the appellant”. As stated by Mr. Justice Décary in Miss Universe at page 626:

It was the duty of the respondent to select a name with care so as to avoid any confusion — as is required under the definition of “proposed trade-mark” in section 2 of the Act — and so as to avoid the appearance that he intended to jump on the bandwagon of an already famous mark.

Where both trademarks have been used for a long time in the same area without evidence of confusion, it is arguable that confusion would be unlikely to occur in the future, thus allowing for the registration of both trademarks. However, in Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3, the Court found that the defendant's marks MR. SUBS'N PIZZA and MR. 29 MIN. SUBS'N PIZZA were confusing with the trademark MR. SUBMARINE although there was no evidence of actual confusion despite ten years of concurrent use in the same area.

3.2.1.3 Paragraph 6(5)(c) – Nature of goods or services

When making a decision concerning the issue of confusion, examiners must consider the nature of the goods or services associated with the trademarks. Therefore, examiners must clearly understand the description of goods or services as it appears in the applications or registrations.

In general, the greater the similarity in the goods or services of two trademarks, the greater the likelihood of confusion. While differences in goods or services may not always be the main consideration in a determination of confusion, they always remain an important consideration. As the Federal Court of Appeal stated in Reynolds Presto Products Inc. v. P.R.S. Mediterranean Ltd., 2013 FCA 119:

There is a greater likelihood of confusion if two trade-marks that resemble each other are used in association with the same products (or substantially the same products) in the same markets. As a result, the resemblance of the two trade-marks should not be viewed in isolation but rather in conjunction with the nature of the wares and the nature of the trade.

3.2.1.4 Paragraph 6(5)(d) – Nature of the trade

Similar to the nature of the goods or services themselves is the consideration of the nature of the trade in which those goods or services circulate. The risk of confusion is greater where the goods or services, even if they are dissimilar, are distributed or provided in the same types of stores or venues.

The nature of the trade extends the consideration of the type of trading environment as well. This relates both to the environment and to the nature of the consumer. For example, examiners must take into account situations in which the goods of one owner is traded on a wholesale level and the other through retail outlets because a professional consumer purchasing at the wholesale level is less likely to be confused than a casual shopper in a retail setting.

However, examiners must not only consider whether the respective trademark owners sell their goods in the same channels, but also whether they are entitled to do so. In Eminence S.A. v. Registrar of Trade Marks (1977), 39 C.P.R. (2d) 40 at page 43, Dubé J. stated:

Even if Fabergé does not sell its products in the same places as appellant, it is legally entitled to do so. It matters little that at the present time Fabergé's wares are sold in hairdressing salons rather than in drug stores.

3.2.1.5 Paragraph 6(5)(e) – Degree of resemblance between the trademarks

In most cases, it is the degree of resemblance between the trademarks in appearance, sound or in the ideas suggested by them that is the dominant factor in assessing a likelihood of confusion. If the trademarks do not resemble one another, it is unlikely that a finding on the remaining factors would lead to a likelihood of confusion: the other factors become significant only if the trademarks are found to be identical or very similar.

The Supreme Court of Canada in Masterpiece Inc. v. Alavida Lifestyles Inc., (2011), 92 C.P.R. (4th) 361 held that the word ‘resemblance’ in the Act refers to “the quality of being either like or similar” and that the phrase ‘degree of resemblance’ implies that trademarks having some differences may still result in confusion.

When assessing confusion between trademarks, the first word or first syllable in a trademark is generally the most important for the purpose of confusion. In Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183, Cattanach J. stated at page 188:

It [respondent] has appropriated the appellant's mark in its entirety and added thereto as a suffix the words “age tendre”. It is axiomatic that the first word or the first syllable in a trade mark is far the more important for the purpose of distinction. Here the first and most important word in the mark which the respondent seeks to register is identical to the mark registered by the appellant.

However, the first portion may not always be the most important, since it is the distinguishing feature and idea of each mark that must be considered. In the Supreme Court of Canada decision of Masterpiece Inc. v. Alavida Lifestyles Inc. (2011) 92 C.P.R. (4th) 361 (S.C.C), Rothstein J. commented as follows in para. 64-65 of the decision:

While the first word may, for purposes of distinctiveness, be the most important in some cases, I think a preferable approach is to first consider whether there is an aspect of the trade-mark that is particularly striking or unique. Here there is nothing striking or unique about the word “Living” or the words “the Art of Living”. “Masterpiece” is the word that distinguishes Alavida and Masterpiece Inc. from other sources of retirement residence services. It is a reasonable conclusion that “Masterpiece” is the dominant word in these trade-marks, and it is obviously identical as between Alavida and Masterpiece Inc. By the same token, in the context of the retirement residence industry, the idea evoked by the word “Masterpiece”, high quality retirement lifestyle, is the same for both Alavida and Masterpiece Inc.

Finally, the word “Living” is identical as between the Alavida and Masterpiece Inc. trade-marks. Given these striking similarities, it is, in my respectful view, very difficult not to find a strong resemblance as a whole between the two, Masterpiece Inc.’s trade-marks and Alavida’s trade-mark.

When considering confusion between a word mark and a mark comprised of words shown in a special font or stylized format, it is not a proper approach to conclude that the differences in the appearance of the words will eliminate the likelihood of confusion. In the decision of Masterpiece Inc. v. Alavida Lifestyles Inc. (2011) 92 C.P.R. (4th) 361 (S.C.C), the Supreme Court of Canada affirmed that the way a word mark is presented may not eliminate the likelihood of confusion since a mark registered as words may be used in any design format, including that similar to the applicant’s mark. Rothstein J. commented as follows in para. 58-59 of the decision:

The problem with an analysis which takes into account limited use becomes apparent by observing that the bare words “Masterpiece Living” could be presented in many ways under the registration. Nothing would prevent Alavida from altering its advertising to highlight the word “Masterpiece” and give the word “Living” less prominence, just as Masterpiece Inc. had done, or from changing the font or style of lettering that it had used. For this reason, it was incorrect in law to limit consideration to Alavida’s post-application use of its trade-mark to find a reduced likelihood of confusion. Actual use is not irrelevant, but it should not be considered to the exclusion of potential uses within the registration. For example, a subsequent use that is within the scope of a registration, and is the same or very similar to an existing mark will show how that registered mark may be used in a way that is confusing with an existing mark.

3.3 Test of confusion

Examiners must put themselves in the position of an ordinary purchaser and ask whether a person with imperfect recollection would be likely to infer that the goods or services associated with the applicant's trademark and those associated with another trademark are manufactured, sold, leased or hired by the same person.

3.3.1 The relevant consumer

In Mattel Inc. v. 3894207 Canada Inc., 2006 S.C.C. 22, the Supreme Court explained the proper approach to the issue of the relevant consumer:

What, then, is the perspective from which the likelihood of a “mistaken inference” is to be measured? It is not that of the careful and diligent purchaser. Nor, on the other hand, is it the “moron in a hurry” so beloved by elements of the passing-off bar: Morning Star Co-Operative Society Ltd. v. Express Newspapers Ltd., [1979] F.S.R. 113 (Eng. Ch. Divat p. 117. It is rather a mythical consumer who stands somewhere in between, dubbed in a 1927 Ontario decision of Meredith C.J. as the “ordinary hurried purchasers”: Klotz v. Corson (1927), 33 O.W.N. 12 (Ont. H.C.), at p. 13. See also Barsalou v. Darling (1882), 9 S.C.R. 677 (S.C.C.), at p. 693. In Aliments Delisle Ltée/Delisle Foods Ltd. v. Anna Beth Holdings Ltd. (1992), 45 C.P.R. (3d) 535 (T.M. Opp. Bd.), the Registrar stated at p. 538:

When assessing the issue of confusion, the trade marks at issue must be considered from the point of view of the average hurried consumer having an imperfect recollection of the opponent’s mark who might encounter the trade mark of the applicant in association with the applicant’s wares in the market-place.

And see American Cyanamid Co. Record Chemical Co., [1972] F.C. 1271 (Fed, T.D.), at p. 1276, aff’d (1973), 14 C.P.R. (2d) 127 (Fed. C.A.). As Cattanach J. explained in Canadian Schenley Distilleries, at p. 5:

That does not mean a rash, careless or unobservant purchaser on the one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived that is the criterion and to measure that probability of confusion. The Registrar of Trade Marks or the Judge must assess the normal attitudes and reactions of such persons.

Having repeated that, I fully agree with Linden J.A. in Pink Panther that in assessing the likelihood of confusion in the marketplace “we owe the average consumer a certain amount of credit” (para. 54). A similar idea was expressed in Michelin & Cie v. Astro Tire & Rubber Co. of Canada (1982), 69 C.P.R. (2d) 260 (Fed. T.D.), at p. 263:

. . . one must not proceed on the assumption that the prospective customers or members of the public generally are completely devoid of intelligence or of normal powers of recollection or are totally unaware or uninformed as to what goes on around them.”

Examiners must remember that even sophisticated consumers of expensive items are not immune to confusion and cannot be credited with total recall. See, for example: System Development Corp. v. Acorn Computers Ltd. (1986), 11 C.P.R.(3d) 401 (T.M.O.B); Nelmetal Ltd. v. Personal Software Inc.( now Visicorp) (No. 2) (1986), 12 C.P.R.(3d) 496; Telesoft v. Taurus Computer Products Inc. (1987), 18 C.P.R.(3d) 120 (T.M.O.B); MicroAge Computer Stores, Inc. v. North American Microtech Inc. (1988), 19 C.P.R.(3d) 289 (T.M.O.B); Mitac Inc. v. Mita Industrial Co.(1992), 40 C.P.R.(3d) 387 (F.C.T.D.).

3.3.2 First impression and imperfect recollection

In Veuve Clicquot Ponsardin c. Boutiques Cliquot Ltée, 2006 SCC 23, [2006] 1 S.C.R. 824 (S.C.C.), Binnie J. explained the test of confusion in the following words:

The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [trademark] at a time when he or she has no more than an imperfect recollection of the [prior] trademarks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the trademarks.

3.3.3 Likelihood vs. possibility

It is also important to remember that the test is one of likelihood, not one of possibility. See Veuve Clicquot Ponsardin v. Boutiques Cliquot, 2006 SCC 23, at paragraph 37; Mattel U.S.A. Inc. v. 3894207 Canada Inc., 2006 SCC 22 (S.C.C.), (2005), 38 C.P.R. (4th) 214 (F.C.A.); Carling O'Keefe Breweries of Canada Ltd. v. Anheuser-Busch Inc. (1986), 10 C.P.R. (3d) 433 (Fed. C.A.).

3.3.4 Both official languages

Examiners must determine whether there is a likelihood of confusion with either English or French speaking consumers as well as whether the average bilingual consumer would also likely be confused. If there is a likelihood of confusion amongst any of these linguistic groups there is a likelihood of confusion. See Choice Hotels International Inc. v. Hotels Confortel Inc. (1996), 67 C.P.R. (3d) 340 (F.C.T.D.) and SmithKline Beecham Corp. v. Pierre Fabre Médicament (2001), 11 C.P.R. (4th) 1 (F.C.A.).

3.3.5 Trademarks in their totality

Where the trademark(s) being considered are composite marks, it is the totality of the trademarks which must be considered. In Battle Pharmaceuticals v. The British Drug Houses Ltd., (1944) Ex. C.R. 239, Thorson J. said at page 60:

It is the combination of the elements that constitutes the trade mark and gives distinctiveness to it, and it is the effect of the trade mark as a whole, rather than of any particular element in it, that must be considered.

3.3.6 Evidence in the Form of a Letter of Consent Supporting No Likelihood of Confusion

It is not a requirement to submit evidence in the form of a letter of consent when an application is being examined to show that the applicant's trademark is not likely to cause confusion with another trademark. However, applicants are permitted to submit letters of consent, or consent agreements, containing information about surrounding circumstances which could establish that there is no likelihood of confusion. This information should shed new light on the test of confusion as described under subsection 6(5) of the Trade-marks Act.

To illustrate, if an applicant submits a letter of consent, or consent agreement, the following information may be relevant:

  1. The parties have operated their businesses in different areas;
  2. The trademark for which the registration is in question (the pending application) had acquired distinctiveness and a reputation in Canada, as it was frequently and continuously used in Canada for a number of years;
  3. There is no real confusion between the trademarks in question during their cohabitation period (coexistence), and
  4. if coexistence abroad is mentioned, the following factors pertaining to the foreign jurisdiction are considered relevant to determine if there is a likelihood of confusion:
    1. the market condition;
    2. the channels of trade used by the trademark owners;
    3. the type of goods and services offered;
    4. the legal test applicable to establish likelihood of confusion; and
    5. the existence of any mechanism to facilitate the reporting of cases of confusion.

3.3.7 Doubt as to confusion

Where examiners are in doubt as to whether the applicant's trademark is likely to cause confusion with another trademark, they shall cause the application to be advertised in the manner prescribed. If the other trademark is registered, pursuant to subsection 37(3) of the Trademarks Act, the owner of the registered trademark shall be notified, by registered letter, of the advertisement of the application.

3.4 Searching

A complete search must include a search of pending, registered, abandoned and refused trademarks under the Trade Marks and Design Act, the Unfair Competition Act, the Trademarks Act and the Newfoundland Register. A search of the refused and abandoned trademarks is made to be aware of past decisions or research which has been compiled and which might apply to the case at hand.

The names of applicants and registered owners are useful to examiners, particularly in cases where the applicant is also the owner of previously registered trademarks which would otherwise be found confusing. See section 15 of the Trademarks Act.

The list of geographical indications is also searched when the application covers such goods.

Subject matter protected pursuant to Article 6ter of the Paris Convention must be reviewed when searching trademarks comprising flags, coats of arms, emblems and the like. See paragraph 9(1)(i) of the Trademarks Act and section 4.7.5 Paragraphs 9(1)(i) and 9(1)(i.1) of this Manual.

3.5 Discovering a confusing trademark

3.5.1 Confusion with a registered trademark – Paragraph 12(1)(d)

If the trademark is confusing with a registered trademark, examiners must raise an objection under paragraph 12(1)(d) of the Trademarks Act. Subsection 37(2) of the Act requires the Registrar to notify the applicant regarding the reasons for the objection and the applicant must be given an opportunity to respond. If the examiner remains of the opinion that the trademark is confusing with the registered trademark, the application may be refused pursuant to subsection 37(1) of the Trademarks Act.

The applicant may attempt to overcome a citation of confusion with a registered trademark by either applying to the Federal Court to have the trademark struck from the register pursuant to sections 18 or 57, or by requesting that a notice be sent pursuant to sections 44 or 45 of the Trademarks Act.

3.5.2 Confusion with a co-pending application

If the trademark is confusing with a trademark which is the subject of a pending application, the examiner must determine who is entitled to registration and raise an objection on the application of the non-entitled person.

3.5.2.1 Persons entitled to registration

Paragraph 37(1)(c) of the Act specifies that the Registrar shall refuse an application for the registration of a trademark if he is satisfied that the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending.

When trademarks of pending applications are confusing, the applicant with the earlier entitlement date (i.e. filing date or priority filing date) will be the person entitled to registration of the trademark.

3.5.2.2 Notification of applicants

When confusion exists between pending trademarks and no other objections or requirements are outstanding, examiners will accept for advertisement the application of the entitled person. At the same time, examiners will notify the non-entitled person of the objection and give the reason for non-entitlement, namely, the earlier filing date or priority filing date of the other application.

Where the non-entitled person's application encounters a co-pending confusing application which is the subject of opposition proceedings, it will not be held in abeyance pending the opposition outcome, and will receive an examiner's report citing the confusing trademark and a period of time in which to reply. See Anheuser-Busch, Inc. v. Carling O'Keefe Breweries of Canada Ltd. (1982), 69 C.P.R. (2d) 136. If the non-entitled person wishes to oppose the earlier filed application, requests for extensions of time may be granted pending the completion of the opposition process.

The Registrar will not issue correspondence to applicants informing them of co-pending and confusing applications with a later filing date or priority filing date.

Where the entitled person’s application encounters a co-pending confusing application which has been advertised (but not yet registered), subsection 37(4) of the Act gives the Registrar the authority to withdraw the advertisement of the non-entitled application.

3.5.2.3 Identical entitlement dates

In cases where two confusing pending applications have the same entitlement date, both applications will be approved for advertisement since it cannot be said that one applicant is entitled to registration over the other.

3.5.2.4 Active applications

In view of paragraph 37(1)(c) of the Act, a co-pending confusing application must be active (i.e. not abandoned) in order for a confusion objection to be raised.

3.5.3 Same owner – Section 15

This section provides that “confusing trademarks are registrable if the applicant is the owner of all of the confusing trademarks.” If the applicant is the owner of the other trademarks, examiners will not raise a confusion objection.

Minor variations in the manner in which the owner's name is set out may not necessarily indicate a difference in ownership. Where it is clear that the identity of the owner of the confusing trademarks is the same, the examiner will not cite those trademarks as confusing. For example, ABC Co. Ltd. is considered to be the same owner as ABC Co. Ltd. doing business as XYZ Ventures.

3.5.4 Confusion with a certification mark

Section 24 of the Trademarks Act provides for the registration of a trademark that is confusing with a registered certification mark if the owner of the registered certification mark consents and if the trademark exhibits an “appropriate difference”. The trademark must be used “to indicate that the goods or services in association with which it is used have been manufactured, sold, leased, hired or performed by [the applicant] as one of the persons entitled to use the certification mark.” The Registrar must, however, expunge the registration should the owner of the certification mark withdraw consent, or upon cancellation of the registration of the certification mark. See subsections 23(2) and (3) of the Trademarks Act.

3.5.5 Confusion with a Newfoundland registration

Sections 67 and 68 of the Trademarks Act provide for the protection of trademarks registered under the Laws of Newfoundland before Newfoundland became part of Canada. Newfoundland registrations are not considered registered trademarks on the register required to be maintained under the Trademarks Act. As such, examiners will not raise a 12(1)(d) objection for trademarks considered to be confusing with Newfoundland registrations. Instead, the examiner will draw the applicant's attention to the Newfoundland registration and inform them that the application can proceed upon receipt of confirmation that registration of the trademark will be subject to the provisions of subsection 67(1) of the Act.

Where an application for a trademark is confusing with a Newfoundland registration in respect of only some of the goods or services in the pending application, the applicant may provide confirmation that registration of the trademark will be subject to the provisions of subsection 67(1) of the Act with respect to the goods or services in association with which use of the applicant’s trademark would be likely to cause confusion with the Newfoundland registration.

Since trademarks registered pursuant the laws of Newfoundland prior to April 1, 1949 do not form part of the register, the amendment provisions of the Trademarks Act do not apply.

However, since the laws of Newfoundland permitted the owner of a trademark to cancel its entry on the register, the Office will cancel a trademark registered pursuant to the laws of Newfoundland prior to April 1, 1949 upon submission of such a request from the owner of the Newfoundland registration.

Additionally, since the laws of Newfoundland permitted the ownership of a trademark to be transferred, the Office will record a transfer of ownership of a Newfoundland trademark upon submission of acceptable documentation which would allow the Office to record the change in ownership, as well as the fee of $1 that was required under the laws of Newfoundland.

Where there has not been a transfer of ownership but the name of the owner of the Newfoundland registration has changed over the years, the Office will record the change in name of the owner of the Newfoundland registration upon submission of acceptable documentation that illustrates the successive changes in name from the owner of the Newfoundland registration as shown on the database to the present name of the owner. If the owner is unable to supply the documentation showing the successive name changes, the Office may accept an affidavit or statutory declaration stating the current name of the owner who registered the trademark under the laws of Newfoundland.

4 Examination of the trademark

4.1 Purpose of examination

A formal review of the application serves to establish its registrability under the Trademarks Act.

Upon receiving the application, examiners will carefully review its contents, giving particular consideration to the following:

4.2 Definition of trademark

Section 2 of the Act defines a trademark as meaning:

  1. a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or
  2. a certification mark

A “sign” includes “a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign”.

4.3 Paragraph 12(1)(a) – Names and surnames

Also see the practice notice entitled “Paragraph 12(1)(a) of the Act — Name or Surname”.

Paragraph 12(1)(a) of the Trademarks Act provides that a trademark is registrable if it is not a word that is primarily merely the name or the surname of an individual who is living or who has died within the preceding thirty years.

The statute generally follows the historical principle of common law that all people should be able to identify their goods or services by their names or surnames, providing the name or surname was used honestly and not with the intent of passing off the goods or services as those of another person with the same or a similar name.

Research must be conducted to determine whether a trademark is the name or surname of an individual who is living or has died within the previous thirty years. Once the name or surname has been located, the test to determine its primary meaning must be applied. Examiners must determine what would be the response of the general public in Canada to that word. If they consider that a person in Canada of ordinary intelligence and of ordinary education in English or French would be more likely to respond to the word by thinking of it as a name or surname than as something else, an objection under paragraph 12(1)(a) will be raised. If, on the other hand, the average Canadian would be just as likely or more likely to respond to the word as something other than a name or surname, an objection should not be raised.

Examiners will raise an objection pursuant to paragraph 12(1)(a) despite the surname being pluralized or in the possessive form.

4.3.1 Definition of “word”

The Interpretation Act provides that the singular includes the plural, so that “a word” in paragraph 12(1)(a) includes “words”.

Furthermore, in Standard Oil Co. v. Registrar of Trade Marks (1968), 55 C.P.R. 49 at page 58, Jackett P. notes that names are included in the definition of “word”:

For trade mark purposes, there are at least three classes of “words”, viz., dictionary words, names, and invented words. They are all words, in my view, at least for the purposes of the Trade Marks Act.

4.3.2 Definition of name or surname

The Office considers a surname to be the name common to members of a family, and considers a name to be a given name or initials combined with a surname for the purpose of individualizing members of the same family.

4.3.3 Merely a name or a surname

When confronted with a word which might be prohibited under paragraph 12(1)(a), examiners must first review the research results to determine whether the word is merely (i.e., only, nothing more than) a surname. An objection may be raised under paragraph 12(1)(a) if the word is only a name or surname that is not found to have any other significance.

If research shows that the word is a name or surname, but also has another significance, a second inquiry must be commenced.

The other significance may be that the word is coined, that the word has a dictionary meaning, that the word is the name of a geographical place.

In the decision of the Exchequer Court in Standard Oil Co. v. Registrar of Trade Marks (1968), 55 C.P.R. 49, Jackett, P., made the following comments at page 58:

As far as the appellant was concerned, therefore, FIOR was a word invented by it for use as its trade mark in this connection. It follows, therefore, that FIOR is not “merely” the surname of a living person because it also has existence as a word invented by the appellant or persons working for it for trade mark purposes.

And further commented at pages 58-59:

Certainly, from the point of view of the people called “Fior” and their immediate circle of friends and acquaintances, the answer is that FIOR is principally if not exclusively a surname, and, from the point of view of the trade mark advisers of the appellant, the answer is that it is principally, if not merely, an invented word. The test, for the purposes of s. 12(1)(a) is not, in my view, the reaction of either of these classes of persons. The test must be what, in the opinion of the respondent or the Court, as the case may be, would be the response of the general public of Canada to the word. My conclusion is that a person in Canada of ordinary intelligence and of ordinary education in English or French would be just as likely, (if the two characters (surname and invented word) are of equal importance, it cannot be said that it is “primarily merely” a surname), if not more likely, to respond to the word by thinking of it as a brand or mark of some business as to respond to it by thinking of some family of people (that is, by thinking of it as being the surname of one or more individuals). Indeed, I doubt very much whether such a person would respond to the word by thinking of there being an individual having it as a surname at all.

Examiners will not consider that the other significance of the trademark is as a brand of the applicant due to use of the trademark. In this respect, the Trademarks Opposition Board, in Molson Breweries, a Partnership v. John Labatt Ltd. (1997) 79 C.P.R. (3d) 512, noted that what is meant by the “also a trademark” in the test for 12(1)(a) is that the trademark would just as likely be seen as a trademark because it is coined, and not because the average consumer would associate the word with a particular source:

Thus, the opponent has met its evidential burden to show that the trade-mark LABATT is the surname of living individuals or those recently deceased. The issue then becomes whether or not the mark LABATT is primarily merely a surname. In this regard, the applicant submitted that, in line with the decision in Standard Oil Co. v. Registrar of Trade Marks (1968), 55 C.P.R. 49 (Ex. Ct.), LABATT is not only a surname but also a trade-mark. However, in Standard Oil, President Jackett held that FIOR was not only a rare surname but also a coined word that most Canadians would perceive as such. In other words, FIOR had an inherent status as a coined word. In the present case, LABATT has no such status; it is a surname and nothing else. LABATT may well be perceived as a trade-mark by the Canadian public but it is not due to its inherent status as a coined word but rather to its extensive use as a trade-mark. To allow that fact to avoid the prohibition in Section 12(1)(a) of the Act is to render the provisions of Section 12(2) meaningless as they relate to Section 12(1)(a).

4.3.4 Meaning of “primarily”

When the research results indicate that the word has name or surname significance as well as another significance, examiners must decide what is the primary (i.e. chief, principal, first importance) meaning of the word.

4.3.5 Test to determine primary meaning

In order to determine the primary meaning of a word, examiners must determine what in their opinion would be the response of the general public of Canada to that word. The primary meaning is not to be determined subjectively, that is, examiners must not base their findings on what they consider to be the primary meaning of the word. Instead, they must ask themselves what would be the response of a person in Canada of ordinary intelligence and of ordinary education in English or French as to the primary meaning of the trademark.

Examiners must then balance the name or surname significance of the word and the other significance of the word found in dictionaries or provided by applicants in their responses. If they believe the name or surname significance overwhelms the other significance in the mind of the hypothetical Canadian, an objection pursuant to paragraph 12(1)(a) must be made to the application. If the examiner believes that the other significance of the word predominates in the mind of the hypothetical Canadian, no objection should be made.

In the event that the surname significance and the other significance of the word are equal when the test is applied, no objection should be raised pursuant to paragraph 12(1)(a).

In Elder's Beverages (1975) Ltd. v. Registrar of Trade Marks (1979), 44 C.P.R. (2d) 59, Mr. Justice Cattanach allowed registration of the trademark ELDER'S, stating at page 63:

In my opinion the two characters of the word “elder”, one as a surname and the other as a dictionary word, are each of substantial significance and therefore it cannot be said that the word is “primarily” a surname.

In the Standard Oil Co. case, Jackett, P. found on the evidence that FIOR is “a word that is...the surname of an individual who is living.” It was also established by evidence that FIOR was created by the applicant by combining the first letters of each of the words “fluid iron ore reduction”. FIOR was an invented word and not “merely” a surname. After reviewing the evidence and the law, President Jackett stated at page 59:

My conclusion is that a person in Canada of ordinary intelligence and of ordinary education in English or French would be just as likely, (if the two characters (surname and invented word) are of equal importance, it cannot be said that it is “primarily merely” a surname), if not more likely, to respond to the word by thinking of it as a brand or mark of some business as to respond to it by thinking of some family of people (that is, by thinking of it as being the surname of one or more individuals). Indeed, I doubt very much whether such a person would respond to the word by thinking of there being an individual having it as a surname at all.

In Registrar of Trade Marks v. Coles Book Stores Ltd. (1972), 4 C.P.R. (2d) 1, Mr. Justice Judson of the Supreme Court of Canada approved the test of the hypothetical person in the FIOR case. In the COLES case, Judson J. found that COLES is a surname well-known to the general public in Canada. He also found that the dictionary meaning of the word “cole” and its plural form “coles” are largely obsolete. at page 3, refusing registration, he stated:

My only possible conclusion in this case is that a person in Canada of ordinary intelligence and of ordinary education in English or French would immediately respond to the trade mark “Coles” by thinking of it as a surname and would not be likely to know that “Coles” has a dictionary meaning.

In Galanos v. Registrar of Trade Marks (1982), 69 C.P.R. (2d) 144, Mr. Justice Cattanach applied the test in allowing registration of the trademark GALANOS and said as follows at page 155:

I have difficulty in appreciating that the purchasing public would respond to the word “Galanos” prominently displayed on the label of a bottle of toilet water by spontaneously thinking of it as being the surname of an individual.

In my opinion a Canadian of ordinary intelligence and education in English or French would be as likely, if not more likely, to respond to the word by thinking of it as a coined, fanciful or invented word used as a brand or trade mark of a business as by thinking of it as primarily merely the surname of an individual.

Therefore, examiners should give weight to the applicant's argument that the word or words adopted are for trademark purposes and should have regard to the public perception of the word or words. Once this has been done, and if it is decided that the word or words are not “merely” a name or surname, i.e., they have dictionary meaning, geographical significance, and so on, then the “primary” meaning of the word or words must be decided.

In Juneau v. Chutes Corp. (1986), 11 C.P.R. (3d) 260 (T.M.O.B.), the trademark JUNEAU was held to be primarily merely the surname of a living individual even though “Juneau” is the capital of Alaska and a county or town in the state of Wisconsin. This was because a majority of Canadians, particularly those in the province of Quebec, would immediately respond to the trademark JUNEAU as having a surname significance as opposed to having any of the geographic significances put forward by the applicant.

4.3.6 Given name and surname

A trademark which appears to be a combination of a given name and a surname, or the initial(s) of a given name or names and a surname, should not be objected to under paragraph 12(1)(a) unless the exact combination can be located in a Canadian directory or other suitable source.

Only then should the test to determine primary meaning be applied.

In Gerhard Horn Investments Ltd. v. Registrar of Trade Marks (1983), 73 C.P.R. (2d) 23, Cattanach J., in allowing registration of the trademark MARCO PECCI, said at page 25:

What is precluded by para. 12(1)(a) from registration as a trade mark is the “name or surname of an individual who is living or has died within the preceding thirty years” and the name of a fictitious person is not precluded thereby from registration except when by chance the fictitious name coined by the applicant for registration thereof coincides with the name of a living person or a person who bore such name and has been dead for less than thirty years.

And later at page 30:

The first and foremost consideration is whether the word or words sought to be registered in the mark is the name or surname of a living individual or an individual who has recently died. It is when that condition precedent is satisfied, and only then, that consideration need be given to the question whether the trade mark applied for is “primarily merely” a name or surname rather than something else.

And again at page 31:

It is not enough that the fictitious name may resemble the name that could be borne by an actual person or might be thought by the public to be names or surnames. That thought only becomes material when it is established by evidence that there is a living person of the name or surname in question.

4.3.7 Surnames with “& Sons”, “Brothers”, “Inc.”, “Co.”, etc.

Words comprised of a name or surname followed by “& Sons”, “Brothers”, “Inc.”, “Co.”, etc., are not objectionable under paragraph 12(1)(a) as the additional matter takes away the “primarily merely” element.

Note: such a trademark may not be inherently distinctive. Also see section 4.9 Not Inherently Distinctive in this Manual.

4.3.8 Compound surnames

A trademark composed of two or more surnames, either separated by a hyphen or not, will not be considered contrary to paragraph 12(1)(a) of the Act unless the an individual having that exact combination can be found in a Canadian directory or other suitable source.

A trademark comprising two words which are primarily merely surnames separated by any indicia, other than a hyphen, such as the word “and” or by an ampersand, oblique sign, asterisk, comma and so on, is not contrary to paragraph 12(1)(a). In such a case, the trademark as a whole cannot be said to be primarily merely the surname of an individual, following the decision of Cattanach J. in Gerhard Horn Investments Ltd. v. Registrar of Trade Marks (1983), 73 C.P.R. (2d) 23.

4.3.9 Surnames that include accents or other characters

A surname may contain accents, umlauts and other similar characters (e.g. Müller, Noël, Côté). When performing a search of Canadian directories, any query made that includes the aforementioned characters may provide results that do not have these characters shown (e.g. Muller, Noel, Cote). However, examiners should still raise an objection pursuant to paragraph 12(1)(a) of the Act when the trademark includes these characters, even though the names or surnames found in the search do not show them.

4.3.10 Reference sources – paragraph 12(1)(a)

Sources of information most commonly referred to regarding name and surname significance include Canadian telephone directories, encyclopedias, social media, and language dictionaries. It is not possible or reasonable for examiners to conduct exhaustive directory searches.

Examiners will also consult dictionaries and other relevant source documents to determine if the word or words have other meanings.

In Standard Oil Co. v. Registrar of Trade Marks (1968), 55 C.P.R. 49, the President of the Exchequer Court considered an objection by the applicant that the appearance of FIOR in directories of certain Canadian cities as a surname is not a proper evidentiary basis for concluding that it is the surname of an individual. President Jackett did not accept this proposition and stated at page 57:

In my view, it