CIPO

Trademarks Examination Manual

Trademarks Examination Manual  1

I Introduction  12

I.1 General Information  12

II Examination of the Application as to Form  12

II.1 Pre-examination  12

II.2 Request for Early Examination  13

II.3 Formal Requirements — Section 30  13

II.4 Types of Applications — Section 16, Paragraphs 41(1)(c) and 30(b) to (f)  13

II.5 Contents Common to All Applications  13

II.5.1 Identity of the Applicant  13

II.5.1.1 Individuals  14

II.5.1.2 Partnerships  14

II.5.1.3 Associations  15

II.5.1.4 Joint Ventures  15

II.5.1.5 Corporations  16

II.5.1.6 Use of French or English Form of Corporate Name  16

II.5.1.7 Wrong Identification of Applicant  17

II.5.2 Address of the Applicant — Paragraph 30(g)  18

II.5.3 Identification and Description of the Mark - Paragraph 30(h) and Rule 24  18

II.5.4 Description of Specific Goods or Services in Ordinary Commercial Terms — Paragraph 30(a) 20

II.5.4.a Ordinary Commercial Terms  21

II.5.4.b Specific Goods or Services  21

II.5.4.1 Broadening of Goods or Services  22

II.5.4.2 Context of the Goods and Services  22

II.5.4.3 Indefinite Terms – "And the like", "And similar goods", "Including", "Related to", "Related services", "Etc.", and "Featuring"  23

II.5.4.4 Definite Terms – "Namely", "Consisting of" or "Specifically"  24

II.5.4.5 "In the nature of", "Such as", "Comprising", "Containing", "In particular" or "Particularly"  24

II.5.4.6 "Accessories", "Equipment", "Apparatus", "Systems" and "Products"  25

II.5.4.7 Parts and Fittings  25

II.5.4.8 Devices  26

II.5.4.9 Computer Software and Computer Programs  26

II.5.4.10 Discs and Other Blank or Pre-recorded Media, such as Magnetic Data Carriers  26

II.5.4.11 Pharmaceutical, Veterinary, Botanical, Nutraceutical, Homeopathic, Medicinal and Medicated Preparations, Remedies, Supplements, Extracts, Functional Foods, Enhanced Water, Medicinal Marijuana and Cannabis Oil  27

II.5.4.12 Intangibles  28

II.5.4.13 Advertising, Promotion and Marketing – Benefit to a third party  28

II.5.4.14 Services Related to the Electronic Transmission of Data  29

II.5.4.15 Telecommunication-Related Services  29

II.5.5 Naming Date of First Use or Making Known — Paragraphs 30(b) or (c)  30

II.5.5.1 Use of a Trademark  30

II.5.6 Trademark Agents and Representatives for Service  32

II.5.6.1 Trademark Agents  32

II.5.6.1.1 Inactive Agents  32

II.5.6.2 Representatives for Service  33

II.5.6.3 Name and Address Changes  33

II.5.7 Applicant's Statement of Claim of Entitlement — Paragraph 30(i)  34

II.5.8 Signature of Applicant  34

II.6 Content Appearing in Some Applications  34

II.6.1 Predecessor in Title — Paragraphs 30(b), (c) and (d)  34

II.6.2 Drawings — Paragraph 30(h) and Rules 27(1) and 28  35

II.6.2.1 Form and Size — Rule 27(1)  36

II.6.2.2 Drawings Lined for Colour — Rule 28  36

II.6.2.3 Colour — Word Description  37

II.6.3 Specimens — Rule 29(c)  38

II.6.4 Nice Classification  39

II.6.4.1 Grouping Goods and Services According to the Nice Classification  40

II.6.4.1.1 Material composition  41

II.6.4.1.2 Additional considerations  41

II.6.4.2 Kits, Gift Baskets and Goods Sold as a Unit  42

II.6.4.3 Examiner correspondences  43

II.7 Contents of Specific Applications  43

II.7.1 Applications Based on Use in Canada — Subsection 16(1) and Paragraph 30(b)  44

II.7.1.1 Naming the Date of First Use  44

II.7.2 Applications Based on Making Known in Canada – Section 5, Subsection 16(1), Paragraph 30(c) 44

II.7.2.1 Manner of Making Known in Canada — Section 5  45

II.7.2.2 Naming Date of Making Known  45

II.7.3 Applications Based on Application or Registration in or for a Union Country and Use Abroad — Subsection 16(2) and Paragraph 30(d)  46

II.7.3.1 Data Appearing in Canadian Application  46

Use in Canada  47

II.7.3.2 Certificate of Corresponding Registration — Subsection 31(1)  48

Owners (other than applicant) Shown on Certified Copy  48

In the Name of More Than One Person  49

Trademark Shown on Corresponding Registration  49

Section 14  50

Foreign Registrations Covering a Number of Trademarks  50

State Registrations  50

II.7.3.3 Priority Date — Section 34  50

Dies Non  52

II.7.4 Applications Based on Proposed Use in Canada — Subsection 16(3), Paragraph 30(e), Subsection 40(2)  52

II.7.4.1 Explanation of Proposed Use Provision  52

II.7.4.2 Declaration of Use — Subsection 40(2)  53

Declaration of Use  53

II.7.4.3 Abandonment under Subsection 40(3)  54

Extensions of Time — Section 47  54

Significant and Substantive Reasons  54

II.7.5 Applications for Certification Marks — Sections 23, 24 and 25 and Paragraph 30(f) 55

II.7.5.1 Definition of Certification Mark  55

II.7.5.2 Use of Certification Mark  55

II.7.5.3 Descriptive of Place of Origin — Section 25  56

II.7.5.4 Data on Application  56

Certification Mark — Lengthy Defined Standard  58

Changing Applications Between Regular Trademark Marks and Certification Marks  59

II.7.6 Applications to Extend Statement of Goods or Services — Paragraph 41(1)(c) and Subsection 41(2)  60

Conversion to an Ordinary Trademark Application  60

Affidavit of Continuous Use  61

Trademarks Previously Registered Pursuant to Section 14 of the Trade-marks Act  61

II.7.6.1 Other Amendments Under Paragraph 41(1)(c)  62

II.7.6.2 Drawings and Specimens - Extension of Goods or Services  62

III Search / Confusion  62

III.1 Purpose of the Search  62

III.2 Definition of Confusion — Subsection 6(2)  64

III.2.1 Surrounding Circumstances — Subsection 6(5)  64

III.2.1.1 Paragraph 6(5)(a) — Inherent Distinctiveness  66

III.2.1.2 Paragraph 6(5)(b) — Length of Time Used  67

III.2.1.3 Paragraph 6(5)(c) — Nature of Goods or Services  67

Pharmaceuticals  68

III.2.1.4 Paragraph 6(5)(d) — Nature of the Trade  68

III.2.1.5 Paragraph 6(5)(e) — Degree of Resemblance between the Marks  68

III.3 Test of Confusion  69

III.3.1 Evidence in the Form of a Letter of Consent Supporting No Likelihood of Confusion  71

III.3.2 Doubt as to Confusion  72

III.4 Searching  72

III.5 Discovering a Confusing Mark  73

III.5.1 Confusion with a Registered Mark — Paragraph 12(1)(d)  73

III.5.2 Associated Marks — Section 15  73

III.5.3 Confusion with Certification Mark  74

III.5.4 Confusion with Newfoundland Registrations  74

III.6 Confusion with Co-pending Applications  75

III.6.1 Persons Entitled to Registration  75

III.6.2 Notification of Applicants  75

III.6.3 Same Entitlement Date  76

III.6.4 Abandoned Applications  76

IV Examination of the Mark  76

IV.1 Purpose of Examination  77

IV.2 Definition of Trademark  77

IV.3 Distinguishing Guises and Three-dimensional Marks  78

IV.3.1 Two-dimensional Marks Applied to Three-dimensional Objects  79

IV.3.2 Distinguishing Guises  79

IV.3.3 Colour  80

IV.3.4 Goods  81

IV.3.5 Shaping of Goods or Their Containers  81

IV.3.6 Mode of Wrapping or Packaging Goods  83

IV.3.7 Evidence of Acquired Distinctiveness  83

IV.3.8 Functionality  84

IV.3.9 Perspectives  85

IV.4 Trademark Consisting of a Sound  85

IV.4.1 Electronic Recording of Sound  85

IV.5 Paragraph 12(1)(a) — Names and Surnames  86

IV.5.1 Definition of "Word"  86

IV.5.2 Definition of Name or Surname  86

IV.5.3 Merely a Name or a Surname  87

IV.5.4 Meaning of "Primarily"  88

IV.5.5 Test to Determine Primary Meaning  88

IV.5.6 Given Name and Surname  89

IV.5.7 Surnames with "& Sons", "Brothers", "Inc.", "Co.", etc.  90

IV.5.8 Compound Surnames  91

IV.5.9 Pluralized Surnames  91

IV.5.10 Surnames in the Possessive Form  91

IV.5.11 Surnames That Include Accents or Other Characters  91

IV.5.12 Reference Sources — Paragraph 12(1)(a)  92

IV.5.13 Historical Significance  92

IV.5.14 Embellishments  93

IV.6 Paragraph 12(1)(b) — Clearly Descriptive or Deceptively Misdescriptive  93

IV.6.1 Definition  93

IV.6.2 Examination under Paragraph 12(1)(b)  94

IV.6.3 Test for Clear Descriptiveness  94

IV.6.4 Depicted, Written or Sounded  97

IV.6.5 Misdescriptiveness  98

IV.6.6 Deceptively Misdescriptive  98

IV.6.7 In the English or French Languages  99

IV.6.8 Character or Quality  99

IV.6.9 Embellishment of Descriptive Words  100

IV.6.9.1 "When Sounded" Test Applied to Composite Marks  101

IV.6.9.1.1 Determination of Whether Words are the Dominant Feature of a Composite Mark  102

IV.6.10 Suggestive Trademarks  103

IV.6.11 Conditions of Production  104

IV.6.12 Persons Employed in the Production  104

IV.6.12.1 Professional Designation  104

IV.6.13 Place of Origin  105

Geographic name  105

Origin of goods or services  106

Deceptively misdescriptive of the place of origin  107

Character of goods or services  107

IV.6.14 Pharmaceuticals  108

IV.6.15 Abbreviations, Acronyms or Initials  108

IV.6.16 Descriptiveness and Terms Such as .com, .ca, .fr, .uk and .us  108

IV.6.17 Hashtag (#)  109

IV.7 Paragraph 12(1)(c) — Name of Goods or Services  110

IV.7.1 Reasons for Paragraph 12(1)(c)  110

IV.7.2 Interpreting and Applying Provisions  110

IV.8 Information from Government Departments — Paragraphs 12(1)(b) and (c) and 30(i)  111

IV.8.1 Paragraph 30(i) and Goods and Services  111

IV.8.1.1 The Bank Act  112

IV.8.1.2 The Canada Post Corporation Act  114

IV.8.1.3 Other Acts  115

IV.8.2 Precious Metals  116

Articles Other Than Plated Articles  118

Gold  118

Silver  118

Platinum  118

Palladium  119

Plated Articles  119

Plated Pocket Watch Cases and Plated Bracelet Watch Cases  119

Plated Spectacle Frames  119

Plated Flatware  120

Plated Hollow Ware  120

IV.8.3 List of Grade Names and Agricultural Product Legends  120

Processed Poultry Products — Poultry Stamps  121

Processed Egg Regulations — Inspection Legend  122

Egg Regulations — Stamps  122

Processed Products Regulations — Stamps  123

Dairy Products Regulations — Stamps  124

Honey Regulations  125

Maple Products Regulations  125

Fresh Fruit and Vegetable Regulations  125

Canada Produce Legend  126

Meat Inspection Regulations — Meat Inspection Legend  126

Livestock Carcass Grading Regulations  127

Beef Grades  127

Beef Grade Stamp  128

Beef Yield Stamp  128

Veal Grades  128

Veal Grade Stamp  129

Hog Grades (Yield Class — No. 1-7)  129

Bison Grades  129

Bison Grade Stamp  130

IV.9 Paragraph 12(1)(d) — Confusion  130

IV.10 Paragraph 12(1)(e) — Prohibited Marks  130

IV.10.1 Paragraphs 9(1)(a), (b) and (c)  130

IV.10.2 Paragraph 9(1)(d)  131

IV.10.3 Paragraph 9(1)(e)  132

IV.10.3.1 Public Notice — Paragraph 9(1)(e)  133

IV.10.4 Paragraphs 9(1)(f), (g), (g.1) and (h)  133

IV.10.4.1 Paragraph 9(1)(h.1)  134

IV.10.5 Paragraphs 9(1)(i) and 9(1)(i.1)  134

IV.10.5.1 Paragraph 9(1)(i.2)  134

IV.10.5.2 Paragraph 9(1)(i.3)  135

IV.10.6 Paragraph 9(1)(j)  135

IV.10.7 Paragraph 9(1)(k)  136

IV.10.7.1 Paragraph 9(1)(k) and Musical Bands  138

IV.10.8 Paragraph 9(1)(l)  139

IV.10.9 Paragraph 9(1)(m)  139

IV.10.10 Paragraph 9(1)(n)  139

IV.10.10.1 Subparagraphs 9(1)(n)(i) and (ii)  140

IV.10.10.2 Subparagraph 9(1)(n)(iii) — Official Marks  140

IV.10.10.2.1 Public Authority — Official Marks  140

IV.10.10.2.2 Public Notice – Official Marks  143

IV.10.10.2.3 Test of Resemblance – Official Marks  144

IV.10.10.2.4 Paragraph 9(1)(n.1)  144

IV.10.11 Paragraph 9(1)(o)  144

IV.10.12 Section 10  145

IV.10.13 Sections 9 and 10 – Informing the Applicant  145

IV.10.14 Paragraph 9(2)(a) – Consent for Use of Prohibited Marks  145

IV.10.14.1 Common Issues Regarding Consent  146

IV.10.14.1.1 Paragraph 9(2)(b)  146

IV.10.15 Paragraph 12(1)(f) and Section 10.1 – Plant Variety Denominations  147

IV.10.16 Paragraphs 12(1)(g), (h) and (h.1) – Protected Geographical Indications for Wines, Spirits or Agricultural Products or Foods  147

IV.10.17 Paragraph 12(1)(i) – Olympic and Paralympic Marks Act  148

IV.11 Disclaimers – Section 35  148

IV.12 Subsection 12(2) – Distinctiveness  149

IV.12.1 General  149

IV.12.2 Evidence  149

IV.12.2.1 Master Affidavits  150

IV.12.2.2 Additional Affidavits  151

IV.12.2.3 Survey Evidence  151

IV.12.2.4 Restriction as to Territory  153

IV.12.3 Determination of Distinctiveness – Subsection 12(2)  153

IV.12.3.1 Prior Decision  154

IV.12.3.2 Onus  154

IV.13 Section 14 – "Not Without Distinctive Character"  155

IV.13.1 Comparison of Subsection 12(2) and Section 14  155

IV.13.2 Data Required on Affidavits  156

IV.13.3 Further Notes on Section 14  157

IV.14 Voluntary Restrictions as to Territory  157

V Examiners' Reports  158

V.1 Objection to Registration – Subsection 37(2)  158

V.2 First Actions  158

V.3 Goods or Services  159

V.4 Paragraph 12(1)(a)  159

V.5 Paragraph 12(1)(b)  159

V.6 Paragraph 12(1)(c)  159

V.7 Paragraph 12(1)(d)  160

V.8 Paragraph 12(1)(e)  160

V.8.1 Paragraph 12(1)(f)  160

V.8.2 Paragraphs 12(1)(g), (h) and (h.1)  160

V.9 Dates of Entitlement  160

V.10 Multiple Claims  161

V.11 Second and Third Actions  162

V.11.1 Telephone Amendments  163

V.11.1.1 Confirmation Not Required  164

V.11.1.2 Written Confirmation Not Required  164

V.11.1.3 Written Confirmation Required  164

V.11.2 Approval and Advertisement  165

V.12 Third and Subsequent Actions  165

V.12.1 Evidence Requirements  165

V.12.2 Deletion of Goods or Services  165

V.12.3 Additional Information  166

V.12.4 Clarification by Examiners  166

V.12.5 Further Entitlement Objections – Pre-publication Search  166

V.12.6 Notice Pursuant to Section 44 and/or Section 45  166

V.12.7 Consent – Confusing Marks  166

V.13 Applicant's Failure to Reply  166

V.13.1 Section 36 – Abandonment of Applications  167

V.14 Extensions of time – Examiners' Reports and Section 36  167

V.15 Effect of Abandoned Trademark Applications  169

V.16 Letter of Refusal  169


 

I Introduction

I.1 General Information

The Trademarks Examination Manual ("this Manual") is designed to serve the needs of the Trademarks Office, specifically, staff in the Examination Section as well as the needs of the public. The Trademarks Office, a branch of the Canadian Intellectual Property Office (CIPO), is the official government body which receives and processes all applications submitted both by individuals and companies who wish to register their trademarks.

This Manual incorporates the interpretation of provisions of the Trade-marks Act and the Trade-marks Regulations by the Courts and should therefore reduce the time needed to process applications by clarifying the statutory guidelines necessary to examine them. In addition, and perhaps more importantly, its use should result in more consistent decision making.

This Manual is also a reference guide for applicants and agents on how examiners will interpret and apply the provisions of the Trade-marks Act and Regulations.

It should be noted that this Manual is a guide only and is not binding on the Trademarks Office. This Manual is in no way intended to replace the Trade-marks Act and Regulations. In the case of any inconsistency between this Manual and the legislation, the Trade-marks Act and Regulations must be followed.

II Examination of the Application as to Form

II.1 Pre-examination

The entire processing of an application from the time of filing to the time of its registration (or, alternatively, refusal or abandonment) involves many different operational units of the Trademarks Office. The majority of trademark applications are filed electronically. The others arrive in the departmental mail room where they are date stamped and then forwarded to the CIPO Finance and Administration Directorate which is responsible for receiving and coding the appropriate fee.

The application is transferred to the Formalities Section where it is assigned a file number. The application is reviewed to ensure that the filing requirements of Rule 25 of the Trade-marks Regulations have been met and, if so, it is assigned a filing date.

The application is then formalized and entered into the database and the electronic index. Receipt of the application is then acknowledged. The application is then transferred to the Examination Section where it is searched and examined.

II.2 Request for Early Examination

(See also the practice notice entitled Requests for Expedited Examination)

Trademark applications are generally examined in order, according to the filing date of the application. The advancement of an application out of routine order creates a favoured position at the expense of all other applicants, and the Registrar will not consider requests for expedited examination.

II.3 Formal Requirements — Section 30

Once the application for registration of a trademark has been processed by the Formalities Section of the Trademarks Office, examiners begin the initial examination, in part to ensure that all the formal requirements of the application form have been satisfied as set out in section 30 of the Trade-marks Act. See also the section entitled "General" in the Trade-marks Regulations.

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

II.4 Types of Applications — Section 16, Paragraphs 41(1)(c) and 30(b) to (f)

In addition to verifying the application's compliance with paragraph 30(a) of the Trade-marks Act, examiners must also review the basis upon which the applicant seeks to register the mark. The applicant will be aided in the completion of his/her application by referring to the Trade-marks Regulations, especially to Rule 25 and to paragraphs 30(b) to 30(f) of the Trade-marks Act.

Although the Trademarks Office does not supply pre-printed forms, suggested forms are available.

Applicants may also file their applications electronically.

II.5 Contents Common to All Applications

II.5.1 Identity of the Applicant

The applicant must be a "person" entitled to registration, as defined in section 2 of the Trade-marks Act. Examiners commonly refer to "persons" as "legal entities". The "person" or legal entity may be an individual, partnership, trade union, association, joint venture or corporation.

The name stated in the application as the applicant must be a legal entity. A legal entity can function legally, sue or be sued and make decisions through agents, as in the case of corporations.

However, the Registrar will generally no longer require an applicant to confirm that it is a "person" as defined in section 2 of the Trade-marks Act. The onus rests ultimately with the applicant to ensure compliance with the Trade-marks Act.

When two or more individuals or legal entities apply for the registration of a trademark, it must be confirmed that they form a lawful association. It is not enough for the individuals to say that they are in business together. The individuals must confirm in writing that they have a legal agreement between them, in other words, a lawful association, such as a partnership or a joint venture. A statement to that effect is sufficient. It is not necessary to submit evidence, an affidavit or revised application. If the applicant cannot confirm that it is a lawful association, then a new application must be filed along with the corresponding fee, correctly identifying the applicant.

Whenever applicable, a predecessor-in-title must be named, indicating previous ownership.

II.5.1.1 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.

Example: John Doe trading as Doe's Deli.

The applicant must not be identified by a trading style alone. Whenever it appears that the application has been made in the name of the applicant's trading style rather than the applicant's own name, the examiner will request an amended application, which must name the legal owner, that is, the individual, as the applicant.

II.5.1.2 Partnerships

While the Office will not register a trademark in the name of more than one individual or legal entity, applications to register a trademark may properly be made 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 (e.g., Mary Jones and John Smith, a partnership, doing business as Jonesmith Enterprises).

It may occasionally happen that two or more individuals apply to register a trademark, but do not indicate the existence of a partnership. Written confirmation that a partnership exists will be sufficient, and the applicant may provide a trading style if one exists.

The onus of determining whether or not a partnership is a legal entity rests with the applicant or registrant. Accordingly, the Office accepts applications, assignments, etc., filed in the partnership name only, without reference to the partners. However, the partnership must be identified as such.

II.5.1.3 Associations

Associations that are legal entities (i.e., lawful associations) may acquire trademark rights either in association with services performed for members or for goods or services used in commerce. The full name of the association and full post office address of its place of business must be set out.

II.5.1.4 Joint Ventures

Applications may also be made by two or more applicants who are engaged jointly in commercial activities which result in the production of goods or the provision of services, e.g., a joint venture, which is another form of lawful association. The full names and full business addresses of the applicants must be set out in the application. Only the general partners in a joint venture need be named, not any limited partners.

However, in cases whereby the parties have separate addresses, the information should be data captured in the following manner:

ABC Inc. and XYZ Ltd., a joint venture

123 1st St.

Ottawa, ON K1K 0A0 and

789 2nd Ave.

Ottawa, ON K3K 1B1

However, due to the fact that the Office is limited by the number of characters that can be entered in the address field, confirmation from the applicants involved in a joint venture as to which address should be entered may sometimes be requested.

The Office no longer requires information establishing the degree of involvement of each partner as was previously the case.

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 should be dictated by the facts in each case, and the documentation submitted at the time of assignment should deal with this question.

II.5.1.5 Corporations

The instructions for completion of an application do not require the applicant to name the jurisdiction under whose laws it was incorporated. The application must, however, contain the full name of the corporation, which may be a private organization or a public authority, e.g., a municipal or provincial corporation or a provincial or federal statutory body.

A common error is when an individual files an application on behalf of a corporation and identifies him/herself either solely or in addition to the corporation or company which he/she represents. In the following examples, if the applicant is XYZ Ltd, all information preceding XYZ Ltd. is considered superfluous and should not be included when identifying the applicant:

Occasionally, an individual who intends to form a corporate body will apply for the registration of a trademark and will request that the registration be made in the name of the intended corporate body. An as-yet-uncreated business entity cannot be a "person" as defined in section 2 of the Trade-marks Act. The applicant may file the application in their own name, and subsequently assign ownership to the intended corporate body after it has been incorporated.

Where a division or component of a corporation is engaged in commercial activity associated with the use of a trademark, examiners will accept, as a proper indication of use by a division, the following:

or

In both cases, "General Furniture Ltd." would be considered the legal entity.

II.5.1.6 Use of French or English Form of Corporate Name

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

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 Grapefruit Inc.

II.5.1.7 Wrong Identification of Applicant

When an application to register a trademark is filed in the wrong name, an attempt is made to remedy the error. The following are examples of the most common errors made when identifying the applicant and the corresponding actions required:

  1. The application shows "Incorporated" instead of "Limited", or vice versa; "Company Limited" instead of "Company Inc.", or vice versa; "Company of Canada Ltd." instead of "Company Ltd.", or vice versa, and so on. A letter from the applicant to the effect that the erroneous entity did not exist at the date of filing will be required together with the details of the filing error for the correction to be made.
  2. The application is filed in the old name of the applicant when a change of name occurred prior to the date of filing the application. The Office will accept this change with the submission of a letter setting out the details of the filing error and a revised application showing the correct name of the applicant. This situation is not contrary to Rule 31(a) as the actual "identity" of the applicant has not changed.

Note: The Trademarks Office will amend a pending trademark 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 shows 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. The applicant advises that an assignment took place prior to the filing of the application; however, the application was filed in the old name. The Office will not accept an affidavit or letter attesting to the circumstances surrounding the error since the applicant was not the owner at the date of filing. This situation is contrary to Rule 31(a) of the Trade-marks Regulations and the application must be re-filed in the name of the current owner.
  2. The applicant is a United States company and is shown as a state corporation, for example, an Illinois corporation, but the Office is advised that this should have been shown as a Delaware corporation. If the Illinois corporation did not exist, then the Office will require a letter setting out the details of the error before accepting the amendment to show the applicant as a Delaware corporation.

If both corporations (Illinois and Delaware) existed at the time of filing and the applicant filed the application naming the wrong one, then nothing can be done to correct the error as this would change the identity of the applicant and would be considered contrary to Rule 31(a) of the Trade-marks Regulations. The application must be re-filed in the name of the correct owner.

  1. When an application is filed in the name of a non-legal entity, no affidavit is required to correct the applicant's name to a legal entity such as changing Farm Foods to Farm Foods Ltd. or to Mary Smith trading as Farm Foods.

Note: Any change to the applicant's name should be made by the assignment section, including typographical errors. Once the change is made, a written confirmation is sent to the applicant outlining any amendments made.

II.5.2 Address of the Applicant — Paragraph 30(g)

The applicant in each case must provide the address of his/her principal office or place of business. A separate mailing address may be provided if the applicant does not wish correspondence to be sent to the foregoing. If an individual does not have a business address, the address of the place of residence will suffice. Where an applicant consists of more than one entity, as in partnerships or joint ventures, separate addresses for each entity may be supplied.

If the applicant has no office or place of business in Canada, the address of the applicant's principal office or place of business abroad as well as the name and address of the person or firm named as the representative for service must be provided. See also section II.5.6.2 of this Manual.

Note: Any change to the applicant's address should be made by the assignment section, including typographical errors. Once the change is made, a written confirmation is sent to the applicant outlining any amendments made.

II.5.3 Identification and Description of the Mark - Paragraph 30(h) and Rule 24

(See also section II.6.2 of this Manual and the practice notice entitled Compliance with Paragraph 30(h) — Marks in a Special Form)

Paragraph 30(h) of the Trade-marks Act provides that unless the application is for the registration only of a word or words not depicted in a special form, a drawing of the trademark is required.

The trademark is considered to be a word mark that is not in special form if it consists of:

  1. A word or words in upper case letters.
  2. A word or words including lower case letters.
  3. A word or words including numerals.
  4. A word or words including French accents.
  5. A word or words including any of the punctuation marks found on standard English or French keyboards.

The trademark must be shown in a drawing if it consists of:

  1. A word or words in special form.
  2. A word or words which incorporate foreign accent marks such as the Spanish tilde.
  3. A composite mark comprising word and design elements.
  4. A mark comprising foreign characters.
  5. A word or words appearing in colour (when colour is claimed as part of the mark) and the drawing is lined for colour.

If the trademark contains design elements, the phrase "The trademark is shown in the attached drawing" should be inserted in the application and the drawing annexed to the application form. The details of the drawing may be described in situations where some portions of the mark cannot be reproduced clearly in the Trademarks Journal. Reference should not be made to a specimen. The following are examples that would NOT be acceptable:

  1. The trademark consists of the word AJAX and a star.
  2. The trademark consists of the word AJAX and a star as shown in the attached drawing.
  3. The trademark is the design as shown in the attached specimen.

Any of the foregoing are properly described by: "The trademark is shown in the attached drawing."

Rule 24 of the Trade-marks Regulations provides that a separate application shall be filed for the registration of each trademark. The following are examples of what examiners should not accept:

  1. The applicant indicates willingness to accept registration of any of the following trademarks:
    1. JIMMY'S PIZZA
    2. JIMMY'S HAMBURGERS
    3. JIMMY'S MUFFINS
  2. The applicant lists the marks and indicates a preference:
    1. HEAVEN'S FAVOURITE (first choice)
    2. ECSTATICA (second choice)
    3. FABUTASTIC (third choice)

If an application is filed wherein the trademark is composed in whole or part of words in more than one language, the trademark must be used exactly in the manner in which it is set out in association with the goods or services. Registration No. 224,146 provides such an example, the trademark consisting of the following words:

The mark was registered in this fashion with the understanding that it would be used in association with the goods exactly in the manner in which it is set above; the three versions cannot be used separately but must be used together. However, if the mark is composed of three separate versions in three languages, and where those versions are to be used separately in association with goods or services, the applicant must apply to register three separate trademarks.

II.5.4 Description of Specific Goods or Services in Ordinary Commercial Terms — Paragraph 30(a)

Paragraph 30(a) of the Trade-marks Act states that an application for a trademark must contain "a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used".

A representative listing of acceptable goods and services that are considered to be ordinary commercial terms for specific goods or services pursuant to paragraph 30(a) of the Trade-marks Act can be found in the Goods and Services Manual.

For goods or services not found in the Goods and Services Manual, the acceptable listings in the Goods and Services Manual 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.

II.5.4.a Ordinary Commercial Terms

Pursuant to paragraph 30(a) of the Trade-marks Act, a statement of goods or services must be "in ordinary commercial terms".

A statement of goods or services is considered to be in ordinary commercial terms where research discloses that the goods and services are set out as they are customarily referred to in the trade, where similar language and scope has been commonly 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.

Moreover, 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 numerous 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. The statement of goods or services must be understood in the trade to describe the goods and services of the applicant.

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

II.5.4.b Specific Goods or Services

Goods or services in ordinary commercial terms must also be "specific" pursuant to paragraph 30(a) of the Trade-marks Act. For example, while "clothing" is an ordinary commercial term, it is not specific, whereas "exercise clothing" is considered to be specific since the type of clothing has been specified.

At times, in order to specifically define a good, the area of use of the good will be required. For example, "catalysts" is an insufficiently defined good. However "catalysts for use in oil processing" or "catalysts for use in the manufacture of industrial chemicals", are both specifically defined areas of use for "catalysts" and render the goods acceptable. This becomes especially important in cases where a trade term can have two completely different meanings, such as "crimping irons" which can be used for hair but also for mending or molding leather or iron.

Similarly, services in ordinary commercial terms, such as "consulting", may be specified by indicating the field of use, such as "consulting in the field of workplace safety".

While a statement of services may be more difficult to specify than a statement of goods, paragraph 30(a) of the Trade-marks Act requires 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.

There are no provisions in the Act to limit services to those which are not "incidental" or "ancillary" to the sale of goods provided that the services are not a normal contractual requirement or within the normal expectation of the purchaser in connection with the sale of goods. See Kraft Ltd. v. Registrar of Trade Marks (1984), 1 C.P.R. (3d) 457. However, services must offer a benefit to a third party in order to be acceptable pursuant to paragraph 30(a) of the Trade-marks Act. Merely making the public aware of the applicant's goods does not provide a real service to the public since the only person who would benefit is the applicant. See Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528.The following three-part test will be considered in determining whether the statement goods or services is considered to be "specific" within the meaning of paragraph 30(a) of the Trade-marks Act:

II.5.4.1 Broadening of Goods or Services

It is important to note that the statement of goods or services made in the initial application may later be further specified. However, Rule 31(e) of the Trade-marks Regulations prohibits an amendment to an application that would change the statement of goods or services so as to be broader than the statement of goods or services contained in the application at the time the application was filed.

II.5.4.2 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 of goods or services. 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" including the service "delivery" would be acceptable as the service 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(a) of the Trade-marks Act without regard to the other listed goods or services.

II.5.4.3 Indefinite Terms – "And the like", "And similar goods", "Including", "Related to", "Related services", "Etc.", and "Featuring"

The statement 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 require further specification: "and the like", "and similar goods", "including", "related to", "related services", "etc." and "featuring". Such terms are generally only acceptable when they follow  specific goods or services.

For example, since "restaurant services" is specific, "restaurant services including take-out services" would also be acceptable. Similarly, since "mutual fund services" is specific, "mutual fund services including mutual fund distribution" would also be acceptable. However, "financial services relating to mutual fund services", would not be acceptable as financial services alone are not considered to be specific having regard to paragraph 30(a) of the Trade-marks Act.

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 be specific pursuant to paragraph 30(a) of the Trade-marks Act.

The Office accepts the use of "featuring" where the applicant must indicate the specific contents 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.

II.5.4.4 Definite Terms – "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".

II.5.4.5 "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(a) of the Trade-marks 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(a) of the Trade-marks 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.

II.5.4.6 "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.

II.5.4.7 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(a) of the Trade-marks Act. For example, "automobile parts" and "dish washer fittings" would be acceptable since "automobiles" and "dish washers" are each considered to be ordinary commercial terms for specific goods.

II.5.4.8 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 II.5.4.b 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".

II.5.4.9 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.

II.5.4.10 Discs and Other Blank or Pre-recorded Media, such as Magnetic Data Carriers

The goods "pre-recorded discs" and "pre-recorded magnetic data carriers" are not considered to be specific pursuant to paragraph 30(a) of the Trade-marks Act. 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.

II.5.4.11 Pharmaceutical, Veterinary, Botanical, Nutraceutical, Homeopathic, Medicinal and Medicated Preparations, Remedies, Supplements, Extracts, Functional Foods, Enhanced Water, Medicinal Marijuana and Cannabis Oil

(See also the practice notice entitled Compliance with Paragraph 30(a) of the Trade-marks Act - Pharmaceuticals)

Goods that are described as "preparations", "remedies", or "supplements" for "pharmaceutical", "veterinary", or "medicinal" use, and similar descriptions of goods, are not considered specific pursuant to paragraph 30(a) of the Trade-marks Act. The fundamental principles for determining the acceptability of goods and services described in section II.5.4.b of this Manual apply equally to such goods, and consist of the ability to:

In addition to these principles, the Office of the Registrar, for the purposes of paragraph 30(a), 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 relates to the prevention rather than treatment of disease.  For example, "pharmaceutical preparations for the treatment of infectious diseases, namely respiratory infections, eye infections" require 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.

II.5.4.12 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.

II.5.4.13 Advertising, Promotion and Marketing – Benefit to a third party

(See also the practice notice entitled Compliance with Section 4 and Paragraph 30(a) Advertising, Marketing and Promotional Services)

In view of the Ralston Purina Co. decision, supra, 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 Trade-marks 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(a) of the Trade-marks Act.

II.5.4.14 Services Related to the Electronic Transmission of Data

(See also the practice notice entitled Compliance with Section 30(a) — Programs - Data Transmission Services)

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.

II.5.4.15 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:

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

For example, the following would be considered acceptable:

II.5.5 Naming Date of First Use or Making Known — Paragraphs 30(b) or (c)

Consistency in the classification and grouping of goods or services into classes is extremely important as regards the date of first use of those goods or services. When an applicant seeks to register a trademark that has been used or made known in Canada, it is advantageous to specify the earliest date of use or making known which can be substantiated in association with the goods or services falling within each general class.

II.5.5.1 Use of a Trademark

The concept of use is important in order to establish a person's right to registration of a trademark and to ensure maintenance of that registration once obtained. See paragraph 18(1)(c) and section 45 of the Trade-marks Act.

Section 2 of the Trade-marks Act defines "use" in relation to a trademark to mean "any use that by section 4 is deemed to be a use in association with goods or services."

Pursuant to subsection 50(1) of the Trade-marks Act, use accrues to the applicant if, under certain conditions, use of the trademark is by a licensee. Wherever applicable, a predecessor in title must be named, indicating previous ownership. For example, in order to establish that use of the applicant's trademark in Canada has been continuous, the applicant must provide a list of all predecessors in title in descending order to cover the period from the date of first use to the present.

Subsection 4(1) states that "a trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred."

As the words "normal course of trade" imply, the use must be by way of a normal commercial transaction. See the following cases:

The word "trade" in subsection 4(1) contemplates some payment or exchange for goods supplied. Free distribution of promotional material or advertising gimmicks displaying the mark may not be considered trade use. See the following cases:

Subsection 4(2) of the Trade-marks Act states that "a trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services."

This implies that services are in fact being provided or offered in Canada. Consequently services that are advertised in Canada must actually be performed in Canada. See the following cases:

There is no definition of "services" in the legislation. Consequently, there is no distinction between primary, incidental or ancillary services. From the case law it would seem that as long as some members of the public receive a benefit from the activity, it may be considered a service. See the following cases:

Subsection 4(3) of the Trade-marks Act states that "a trademark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods".

It has been stated that in the context of the Trade-marks Act as a whole, the words "exported from Canada" must be taken to mean "sent from Canada to another country in the way of commerce", or "transported from Canada to another country in the course of trade". See the following cases:

II.5.6 Trademark Agents and Representatives for Service

II.5.6.1 Trademark Agents

Rule 2 defines a trademark agent as a person whose name is entered on the list of trademark agents referred to in Rule 21 of the Trade-marks Regulations.

Rule 8(2) provides that correspondence concerning the prosecution of the application will be with a trademark agent, where the trademark agent has been authorized to act on behalf of the applicant in one of the following ways:

  1. the trademark agent files the application with the Registrar as the agent of the applicant;
  2. the trademark agent is appointed as the agent of the applicant in the application or an accompanying document; or
  3. the trademark agent is appointed as the agent of the applicant after the application is filed.

As per Rule 11(1), the appointment of a trademark agent need not be made in writing, but the Registrar may require the agent to file a written authorization from the person or firm that the agent claims to represent, where the circumstances described in any of Rules 8(2)(a) to (c) have not occurred or the appointment has not been clearly established.

Note: Rule 9 provides that where a trademark agent is not a resident of Canada, the agent shall appoint an associate agent who is a resident of Canada, and where an associate trademark agent is not appointed, the Registrar shall correspond with the applicant.

II.5.6.1.1 Inactive Agents

No correspondence should be sent to or received from an inactive agent. An "inactive agent" is an agent whose name has been removed from the list of trademark agents pursuant to Rule 22(3) of the Trade-marks Regulations. In such cases a letter should be sent directly to the applicant to inform them of the situation.

The correspondence will be sent directly to the applicant, a copy of which will be sent to the inactive agent, indicating that the Trademarks Office cannot correspond with the agent since the agent is inactive. Please note that examiners must amend the correspondence MANUALLY to indicate the applicant's name and address instead of the agent's.

In all cases, should the agent be inactive but a representative for service is appointed on the file, the Office will correspond with the applicant c/o the representative for service.

II.5.6.2 Representatives for Service

Section 2 of the Trade-marks Act defines a representative for service as the person or firm named under paragraph 30(g), subsection 38(3), paragraph 41(1)(a) or subsection 42(1) of the Trade-marks Act.

Paragraph 30(g) requires that if the applicant has no office or place of business in Canada, the applicant must provide the name and address in Canada of a person or firm to whom any notice in respect of the application or registration may be sent, and on whom service of any proceedings in respect of the application or registration may be given or served with the same effect as if they had been given to or served on the applicant or registrant himself.

Note: Since Rule 8(1) of the Trade-marks Regulations provides that "correspondence relating to the prosecution of an application for the registration of a trademark shall be with the applicant," a representative for service cannot act on behalf of the applicant. Therefore, where a trademark agent has not been appointed, correspondence concerning the prosecution of the application will be with the applicant, in care of the address of the representative for service.

If paper or electronic correspondence is received from the representative for service, a letter should be sent directly to the applicant to inform them of the situation, a copy of which will be sent to the representative for service, indicating that the Trademarks Office can only correspond with the applicant or their agent.

In such cases, and if the applicant's response date has lapsed, the applicant will be considered in default in the prosecution of the application and will be granted a two-month period to provide a proper response.

If the applicant's response date has not lapsed, the applicant will still be considered in default in the prosecution of the application, however will have the remainder of the period to provide a proper response.

II.5.6.3 Name and Address Changes

A list will be kept for all trademark agents and representatives for service.

All name and address changes for a trademark agent or representative for service will be handled by the Formalities Section.

The trademark agent or representative for service will not be required to supply a list of affected trademarks (registered or pending).

The change will be reflected on all trademark applications and registrations for which the person or firm acts as the trademark agent or representative for.

Paper files and existing paper documents will not be amended to reflect the change. However, the new name and/or address will appear on subsequent correspondences.

If the individual or firm wishes to be entered as the trademark agent and the representative for service, it should be clearly stated in the correspondence.

II.5.7 Applicant's Statement of Claim of Entitlement — Paragraph 30(i)

Pursuant to paragraph 30(i) of the Trade-marks Act, the application must include the statement that "the applicant is satisfied that he is entitled to use the trademark in Canada in association with the goods or services described in the application". This establishes that all information and supporting evidence, including revisions or additions of same, have been submitted in good faith, and that the application as it stands is approved by the applicant. See also section IV.8 of this Manual.

II.5.8 Signature of Applicant

A signature is not required for filing a trademark application. The Trademarks Office will also accept trademark applications and letters of prosecution 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. A trademark agent may also sign on behalf of the foregoing entities. The signature of each of the parties in a joint venture may be affixed to the application, unless it is signed by their trademark agent.

II.6 Content Appearing in Some Applications

II.6.1 Predecessor in Title — Paragraphs 30(b), (c) and (d)

Pursuant to subsection 50(1) of the Trade-marks Act, use accrues to the applicant if, under certain conditions, use of the trademark is by a licensee. Wherever applicable, a predecessor in title must be named, indicating previous ownership. For example, in order to establish that use of the applicant's trademark in Canada has been continuous, the applicant must provide a list of all predecessors in title in descending order to cover the period from the date of first use to the present.

II.6.2 Drawings — Paragraph 30(h) and Rules 27(1) and 28

(See also section II.5.3 of this Manual and the practice notice entitled Compliance with Paragraph 30(h) - Marks in a Special Form)

Paragraph 30(h) of the Trade-marks Act provides that unless the application is for the registration of only a word or words not depicted in a special form, a trademark application shall contain a drawing of the trademark and such number of accurate representations of the trademark as may be prescribed. Drawings will be required in the following instances:

  1. The mark is a word composed of any lower case lettering and the lower case lettering is a feature of the trademark.
  2. The word(s) appears in any special arrangement other than on horizontal lines.
  3. A claim to specific colour or colours is made in respect of the whole or part of the mark and the drawing is lined for colour.
  4. The word(s) includes foreign language accents other than those used in the French language. Because Canada recognizes both French and English as its official languages, accents used in the French language are not considered to be design characteristics although accents in other languages may be.
  5. The mark is comprised of foreign characters. (Note: Pursuant to Rule 29, the applicant must provide both a translation and transliteration which will be included in the particulars of the application upon its advertisement in the Trademarks Journal.)

Furthermore, the Office does not consider that an application for the registration of a word or words is in special form merely because it includes any of the following punctuation marks:

the period (.), the question mark (?), the exclamation mark (!), the comma (,), the semicolon (;), the colon (:), the ellipsis (…), parentheses ( ), brackets [ ], quotation marks (" "), single quotation marks (' '), inverted commas ( ‘ '), the dash (-), the asterisk (*), the diagonal (/ \), the dollar sign ($), and the underscore ( _ )

Accordingly, the inclusion of any punctuation marks commonly found on an English or French keyboard will not render the trademark to be in special or design format.

II.6.2.1 Form and Size — Rule 27(1)

The Trademarks Office electronically captures all designs submitted with applications and makes these available for viewing and searching through electronic means. To help ensure that the Office can capture a good quality image of the design, the original should be produced in a high resolution and/or of a good quality. The size should be limited so as to meet the space requirements for reproduction in the Trademarks Journal. Currently, the graphical file must be in TIFF format and be smaller than one megabyte in size to be accepted by the electronic filing system.

The drawing is a representation of the essential constituents of the trademark and therefore should not be enclosed in a rectangle or circle or the like, unless these are features of the mark as used or proposed for use. Neither should the following appear on the drawing: the words "Marque de fabrication", "Marque Déposée", "MD", "Trademark", "TM", "Trademark Pending" or "Trademark Registered" in full, or in abbreviated form, or the "R" symbol enclosed in a circle (®).

Matter which may be associated with trademarks on the packages or containers in which goods are offered for sale, but which is not a component of the mark, should not appear on the drawing. Examples of such matter include listings of ingredients, size, weight, volume, alcoholic content, the address of applicant, phone and fax numbers. Examiners may either ask for authorization to delete such matter from the drawing on file or request a revised drawing.

II.6.2.2 Drawings Lined for Colour — Rule 28

Where colour is claimed as part of the trademark for which protection is sought, the applicant should so indicate by describing the colour claims and, if such description is not clear, by lining the drawing for colour in accordance with the colour chart shown below pursuant to Rule 28(2) of the Trade-marks Regulations. Stippling, light and heavy lining, shades of grey, or anything similar which may appear on the drawing will not be regarded as possible colour features of a trademark by examiners, unless there is some other indication that the color grey may be a feature of the trademark, such as the description of the mark as indicated on a certified copy of a foreign registration.

Drawings Lined for Colour

If the drawing furnished with the application is lined and the application contains no reference to a colour claim, examiners will inquire as to the purpose of the lining on the drawing, i.e., whether colour is a feature of the trademark. If colour is claimed as a feature of the trademark, the applicant will be required to provide a statement to the effect that "Colour is claimed as a feature of the trademark and the drawing is lined for the colour(s)…" with the specific colour or colours indicated. This statement is understood to be a claim to colour as an integral part of the trademark, and therefore will be included in the particulars of the application when advertised, and of the registration.

The applicant may also respond with the statement that "The lining is a feature of the mark but does not indicate colour" or that "The lining is used to indicate shading but colour is not a feature of the mark." These statements will also be included in the advertisement of the mark and the registration particulars since they serve to clarify the purpose of the lining.

If an applicant states that the drawing is lined for colour, e.g., red, but the colour red is not claimed as a feature of the mark, the statement that "The drawing is lined for the colour red but the colour red is not claimed as a feature of the trademark" which will be included in the particulars of the application upon its advertisement in the Trademarks Journal.

II.6.2.3 Colour — Word Description

(See also the practice notice entitled Colour Claims: PANTONE)

Paragraph 30(h) of the Trade-marks Act provides that unless a trademark application is for word(s) not depicted in special form, it must contain a drawing of the trademark and such number of accurate representations of the trademark as may be prescribed. If the applicant claims colour(s) as a feature of the trademark, Rule 28 of the Trade-marks Regulations requires that the said colour(s) must also be described.

In Apotex Inc. v. Searle Canada Inc. (2000), 6 C.P.R. (4th) 26 (F.C.T.D.), Rouleau J. set out the rationale behind paragraph 30(h) and the requirement for precision in a trademark application:

The onus is on the applicant for a mark to show its compliance with this requirement of the legislation. The drawing submitted must be a meaningful representation of the applicant's mark in the context of the written description appearing in the application …. The rationale behind these statutory requirements is that a trademark registration is a monopoly and must therefore be precise in terms of its scope.

Where the colour claim is for a colour not found in Rule 28 of the Trade-marks Regulations, if applicable, the applicant is required to include a description of the colour code and reference system for each colour(s) claimed. Should the name of the colour system be the subject of a registered mark, the name of the colour system must be set out in uppercase letters and must include the statement that the name of the colour system is a registered trademark. The following is an example of an acceptable description: "the colour turquoise (PANTONE 15-5519)" is claimed as a feature of the mark. "PANTONE is a registered trademark".

While the Office does not endorse or recommend any one colour identification system, any colour reference used should be easy to identify and reproduce by the general public.

If the application contains a colour description which is readily visualized and clear, examiners will not require lined drawings.

If, however, the application contains a colour description that is not readily visualized, examiners will request that lined drawings be furnished.

II.6.3 Specimens — Rule 29(c)

While specimens are not required to file an application, Rule 29(c) of the Trade-marks Regulations provides that the Registrar may require an applicant to furnish a specimen of the trademark as used. Specimens are required in some cases since the information provided on actual labels, packages, displays and the like may help examiners to more clearly understand the nature of the goods or services associated with the trademark. If there is any discrepancy between the trademark as applied for and the specimen submitted, examiners will request clarification before proceeding.

If colour is claimed as a feature of the trademark in the application, the specimen submitted should be in the colour(s) claimed.

When actual labels, containers or displays showing the trademark as used cannot be sent because of size or material limitations, photographs of the goods, labels, containers, etc., will suffice. Specimens such as stampings, dies, invoices, or mailing labels may be acceptable as long as they show the trademark as used.

Applicants should not send valuable items or containers such as aerosol spray cans, the former because they risk being damaged or lost, the latter because they are dangerous if punctured or exposed to heat. Business cards or letterheads may be submitted as specimens to show trademark use in association with goods or services. An applicant may also submit a flyer or an invoice as long as it shows the mark as used in association with the goods or services.

II.6.4 Nice Classification

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

Trademark examiners will conduct research on how goods and services are used in the trade in order group them according to the classes of the Nice Classification.

While goods or services must be stated "in ordinary commercial terms" and "specific", even where goods or services are considered to comply with paragraph 30(a), additional details may be required in order to be grouped according to the classes of the Nice Classification.

The Goods and Services Manual should always be consulted in order to ascertain the exact classification of goods or services. However, 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. 

Editions

When a new edition of the Nice Classification is in place, any changes apply only to Canadian applications filed on or after the effective date of the change.

When an application has been filed prior to the effective date of the new edition, applicants have the option of remaining in compliance with the edition of the Nice Agreement that was in effect at the date of filing or amending the application to comply with the current edition during examination.

An applicant may voluntarily submit an amended application to bring it in line with the current edition of the Nice Classification. However, if an applicant choses to do so, the application must conform to the current edition for ALL the goods or services in the application. Applicants cannot choose to have some goods or services conform to the current edition and other goods or services conform to the requirements of a previous edition.

II.6.4.1 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" which 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".

II.6.4.1.1 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 automobile parts would be placed in Class 12.

II.6.4.1.2 Additional considerations

Reference to other classes

Care must be taken to avoid 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 still 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 not acceptable since such wording is not considered to be ordinary commercial terms for specific goods.

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.

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 applied for the goods "mufflers" alone, this statement is void of context and will need to be redefined pursuant to paragraph 30(a). 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 either inform the applicant that the classification is incorrect if issuing a report or simply approve the application without reference to the Nice class.

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. See also section II.5.4.11 of this Manual for more information on defining medicated products.

Lastly, care must be taken concerning the scope of goods or services when viewed in the context of the class in which it is applied for. 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.

II.6.4.2 Kits, Gift Baskets and Goods Sold as a Unit

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.

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

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, e.g., "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.

II.6.4.3 Examiner correspondences

See also the practice notice entitled Nice Classification.

No classes indicated

Where appropriate, examiners will inform applicants that the Trade-marks Office has begun accepting the International Classification of Goods and Services for the Purposes of the Registration of Marks ("the Nice Classification") established by the Nice Agreement and administered by the World Intellectual Property Organization ("WIPO").

Examiners will inform trademark owners that they now have an option to voluntarily amend their trademark applications and registrations to group their goods and services according to the classes of the Nice Classification.

Incorrect classes indicated with other objections or requirements

A trademark application will retain the class numbers identified by the applicant until the application has been assigned to an examiner.

After considering all substantive objections, the examiner will review the goods and services to ensure the applicant provided the proper Nice class. If the examiner cannot determine the proper Nice class, the examiner will issue a report wherein the examiner will also request a revised application to correct the Nice class.

Should the trademark owner choose not to amend the grouping of the goods and services according to the examiner's instructions, the application or registration will proceed without any classes of the Nice Classification.

Incorrect classes with no outstanding objections or requirements

Examiners will assess goods or services that have been grouped according to the Nice Classification.

However, where there are no outstanding objections or requirements but the goods are incorrectly grouped according to the Nice Classification, the application will be approved for advertisement without indication of any Nice classes. Since the legislative provisions regarding Nice Classification are not yet in force, the Office does not have the authority to request the applicant to conform to these provisions.

Correct classes indicated

Where there are no outstanding objections or requirements, and the goods or services are correctly grouped according to the Nice Classification, the classes will be entered in the database.

II.7 Contents of Specific Applications

II.7.1 Applications Based on Use in Canada — Subsection 16(1) and Paragraph 30(b)

Paragraph 30(b) of the Trade-marks Act provides that an application for registration of a trademark that has been used in Canada must contain the date from which the applicant or his named predecessors in title, if any, have used the trademark in association with each of the general classes of goods or services described in the application.

II.7.1.1 Naming the Date of First Use

It is not acceptable for the applicant to use an expression such as "on or about" to identify dates of first use since this is not precise enough. Acceptable alternatives are "since," "since before", "since at least", "since as early as" and "since at least as early as".

The date of first use can be stated as just the year of first use, just the month and year of first use, or the day, month and year of first use. However, in all cases the date of first use cannot be subsequent to the filing date of the application.

Note: When only the month and year are named, the last day of the month will be regarded as the effective date. When only the year is named, December 31st of that year will be the determining date. See also the practice notice entitled Notice – Specific Date of First Use.

II.7.2 Applications Based on Making Known in Canada – Section 5, Subsection 16(1), Paragraph 30(c)

Section 5 of the Trade-marks Act states the following:

An application that contains a "made known" claim and a "proposed use" claim for the same goods or services is acceptable.

As well, an application may be based on "making known in Canada" and "use in Canada" for the same goods or services on identical dates or where use has taken place before the making known. While there must be use in another country of the Union in order to claim "making known", that does not mean that there cannot be use in Canada.

II.7.2.1 Manner of Making Known in Canada — Section 5

Apart from stating that the mark has been used in a particular country of the Union other than Canada in association with the goods or services, the applicant must be specific about the manner of making the mark known in Canada. One or more of the following statements may be made:

  1. The trademark has been made known in Canada by reason of the distribution of the goods in association with the trademark in Canada.
  2. The trademark has been made known in Canada by reason of the advertising of the goods or services in association with the trademark in printed publications circulated in Canada in the ordinary course of trade among potential dealers in or users of such goods or services.
  3. The trademark has been made known in Canada by reason of the advertising of the goods or services in association with the trademark in radio or television broadcasts ordinarily received in Canada by potential dealers in or users of such goods or services.

II.7.2.2 Naming Date of Making Known

It is not acceptable for the applicant to use an expression such as "on or about" to identify dates of making known in Canada since this is not precise enough. Acceptable alternatives are "since", "since before", "since at least", "since as early as" and "since at least as early as".

The date of making known in Canada can simply be stated as just the year of making known or just the month and year of making known, or the day, month and year of making known. However, in all cases the date of making known cannot be subsequent to the filing date of the application.

Note: When only the month and year are named, the last day of the month will be regarded as the effective date. When only the year is named, December 31st of that year will be the determining date.

II.7.3 Applications Based on Application or Registration in or for a Union Country and Use Abroad — Subsection 16(2) and Paragraph 30(d)

II.7.3.1 Data Appearing in Canadian Application

Under the provisions of subsection 16(2), an applicant who has applied for or registered a trademark in or for another Union country and used it in any country may file to register his/her mark in Canada.

In accordance with paragraph 30(d), the Canadian application must contain particulars of the corresponding foreign application or registration such as the following:

  1. The registration date and number of the registration or the serial number and the filing date of the application.
  2. The country of the Union in or for which the mark was registered or applied for. Section 2 of the Trade-marks Act defines "country of the union" as:
    1. any country that is a member of the Union for the Protection of Industrial Property constituted under the Convention, or
    2. any World Trade Organization (WTO) Member.

Note: A registration in Benelux (economic union of Be[lgium], Ne[therlands], and Lux[embourg]) is acceptable since it is equivalent to a registration in each of the three countries — Belgium, Netherlands and Luxembourg.

European Union trademarks registered in the European Union Intellectual Property Office (EUIPO) are acceptable. Claims based on a World Intellectual Property Office (WIPO) international registration are also acceptable, however the applicant must confirm that the international registration extends to the applicant's country of origin (i.e., the international registration must have effect in the applicant's country of origin as that term is defined in section 2 of the Trade-marks Act). The reason for this is because the international registration cannot be considered to be "in or for" the country of the initial application/registration on which the international registration was based which is why the applicant must confirm that the international registration extends to its country of origin.

  1. The name of a country in which the trademark has been used by the applicant or the applicant's named predecessor in title, if any, in association with each of the general classes of goods or services described in the application. The country need not be a country of the Union. If the trademark has not been used in a single country in association with all the specific goods or services, but has been used in one country in association with some of them and in another country in association with others, the names of two (or more) countries should be provided.

Use in Canada

Paragraph 30(d) requires the applicant to name the country in which the trademark has been used. However, this is only required if the trademark has neither been used in Canada nor made known in Canada. If the application also includes a separate paragraph containing claim pursuant to subsection 16(1), the paragraph containing the subsection 16(2) claim does not need to include a statement of use.

Although subsection 16(2) is labelled "Marks registered and used abroad", there is nothing in subsection 16(2) nor in paragraph 30(d) that requires the trademark to be "used abroad". Therefore, the applicant is free to state Canada as its country of use.

However, pursuant to paragraph 30(b) of the Trade-marks Act, once Canada is named as a country of use, the applicant is then required to provide the date from which the applicant or his named predecessors in title, if any, have so used the trademark in association with each of the general classes of goods or services described in the application. Moreover, since the date of first use in Canada does not need to be in the form of a separate subsection 16(1) claim in a separate paragraph, it is acceptable for the application to include a claim where the first half of the paragraph sets out the particulars of the foreign application or registration, but where the second half of the paragraph is a statement of use in Canada, as long as it indicates the date of the first use of the trademark in Canada in association with each of the general classes of goods or services described in the application.

Note: Since Benelux and EUIPO are not countries, they cannot be named as countries of use. However, "European Union (formerly European Communities)" is listed as a WTO Member and therefore it is acceptable as a country of use.

  1. The "country of origin" of the applicant. Section 2 of the Trade-marks Act defines "country of origin" as:
    1. the country of the Union in which the applicant for registration of a trademark had at the date of the application a real and effective industrial or commercial establishment, or
    2. if the applicant for registration of a trademark did not at the date of the application have in a country of the Union an establishment as described in paragraph (a), the country of the Union where he on that date had his domicile, or
    3. if the applicant for registration of a trademark did not at the date of the application have in a country of the Union an establishment as described in paragraph (a) or a domicile as described in paragraph (b), the country of the Union of which he was on that date a citizen or national.

If the address for the applicant shows a country (e.g., Japan) which differs from that upon which the 16(2) claim is based (e.g., United States), examiners will request confirmation that the United States is the country of origin of the applicant as defined in section 2 of the Trade-marks Act in order to substantiate the claim made pursuant to the provisions of subsection 16(2) of the Trade-marks Act.

Note: In the first portion of the subsection 16(2) claim, the goods or services in association with which the foreign trademark application has been filed or the trademark registered must be listed as shown on the certified copy, however, they can be limited to only the goods or services in association with which the applicant wishes to register the trademark in Canada.

In the second portion of the subsection 16(2) claim, the goods or services in association with which the trademark has been used in any country must be defined in specific and ordinary commercial terms in accordance with paragraph 30(a) of the Trade-marks Act.

II.7.3.2 Certificate of Corresponding Registration — Subsection 31(1)

When a Canadian application is based on an application or a registration in or for a Union country, the mark may be examined but may not proceed to advertisement until a certified copy of the registration is filed in Canada. The applicant must furnish a copy of such registration certified by the office in which it was made, together with a translation thereof into English or French if it is in any other language.

Subsection 31(1) of the Trade-marks Act is clear in requiring that the certified copy be issued by the office in which it is made. The certified copy may be submitted electronically by fax or online. A photocopy of the certified copy may also be submitted. However, the Trademarks Office will not accept alternatives such as the submission of a notarized copy of a foreign registration accompanied by an affidavit attesting to its authenticity.

In cases whereby the copy of the foreign registration indicates that the registration is valid until a certain date and that date has lapsed, a new copy of the registration showing that the registration period has been renewed or extended will be required for the trademark to be approved for advertisement in the Trademarks Journal.

Owners (other than applicant) Shown on Certified Copy

A certified copy of the corresponding foreign registration which stands in the name of the applicant's predecessor in title is acceptable, as subsection 16(2) states "…that the applicant or the applicant's predecessor in title has duly registered in or for the country of origin of the applicant and has used in association with goods or services is entitled…" The Trade-marks Act and Regulations do not contain a requirement that the foreign registration stand in the applicant's name. However, the applicant must indicate in the application that he/she is relying on the predecessor in title named in such application/registration.

However, if an application is filed in the name of an applicant in both Canada and the foreign country, and the certified copy when submitted shows that the foreign registration is no longer in the name of the original applicant, the subsection 16(2) claim will no longer be acceptable. This is because the foreign registration stands in the name of a new owner.

In the Name of More Than One Person

The Office considers that a foreign registration which stands in the name of more than one person cannot be considered to have been registered by the applicant or the applicant's predecessor in title pursuant to subsection 16(2) and paragraph 30(d) of the Trade-marks Act.

Therefore, the certified copy of the foreign registration which stands in the name of several individuals may not support the applicant's claim made pursuant to subsection 16(2) of the Trade-marks Act.

Trademark Shown on Corresponding Registration

In order to support a subsection 16(2) claim, the trademark shown on the corresponding registration must be identical in all respects to that shown in the application. Paragraph 30(d) of the Trade-marks Act states: "…in the case of a trademark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or his named predecessor in title on which the applicant bases his right to registration…" [emphasis added].

Therefore any discrepancy between the mark applied for in Canada and that registered abroad would mean the applied for mark is no longer the one in the foreign registration. For example, a design mark applied for in Canada would not be supported by a certified copy that showed the identical features in a different arrangement, nor would it be supported by a certified copy that included a colour claim that was not incorporated in the Canadian application.

However, differences in the registration which are due only to another office's different way of showing word marks in standard characters are not relevant. Examples of this are when foreign registrations show a word mark wherein the first letter of the word is capitalized followed by lower case letters (such as shown in a German registration) or when the foreign registration shows a word mark in what appears to be bolder upper case lettering than that shown in the corresponding Canadian application.

Where the certified copy of the foreign registration contains a statement to the effect that the characters in the certified copy (letters and numbers) are considered as being standard, and also contains a statement to the effect that there is no claim to any particular font style, size, or colour, an examiner will accept the certified copy in support of the applicant's claim made pursuant to subsection 16(2) of the Trade-marks Act in respect of an application for a word mark that is in all capital letters in the Canadian application.

Section 14

An application may include a claim made pursuant to the provisions of section 14 of the Trade-marks Act for a trademark that the applicant or the applicant's predecessor in title has caused to be duly registered in or for the country of origin of the applicant. Such a claim does not require a statement of use in compliance with the provisions of paragraph 30(d), however a certified copy of the registration must be provided together with the prescribed fee.

Note: A certified copy showing a trademark that differs from the applied for trademark only by elements that do not alter the distinctive character or affect the identity of the trademark will be accepted in support of a claim to the benefit of section 14 but not in support of a subsection 16(2) claim. The section 14 claim must be made exclusive of a subsection 16(2) claim in order to permit reliance on a slightly varied version of the applied for trademark.

Foreign Registrations Covering a Number of Trademarks

If an application for a single trademark is based on a subsection 16(2) claim and the corresponding foreign registration comprises a series of design or word trademarks (one of which is the applicant's trademark), the foreign registration will not normally serve to support the claim, as the trademark differs from that which was registered.

However, this type of registration will be accepted from the countries of Australia, New Zealand, Singapore, the United Kingdom, Hong Kong, China and Bermuda since such a registration has been shown to be the equivalent of a single registration for each of the trademarks listed on the certified copy.

State Registrations

Occasionally, an applicant will seek to base a subsection 16(2) claim on a registration obtained in one of the individual American states (e.g., North Carolina). However, such a claim is unacceptable since section 2, subsection 16(2) and paragraph 30(d) of the Trade-marks Act clearly indicate that a registration relied upon must be one that has been issued in or for a country of the Union. A state registration would not meet the foregoing criteria as neither would North Carolina be a country of the Union nor could such a registration be considered to have been effected in the applicant's country of origin.

II.7.3.3 Priority Date — Section 34

(See also the practice notice entitled Priority Claims)

Under the terms of the Convention, an applicant (or his/her successor-in-title) who is a member of a country of the Union may file an application for registration of a mark in Canada, and may claim as the filing date, the date he/she filed an application in or for the Union country for the same or substantially the same mark for use in association with the same kind of goods or services.

In accordance with subsection 34(1) of the Trade-marks Act, in order for an applicant to make a claim of priority based on an earlier filed application, a declaration setting out the date and country of filing of the earlier application must be filed with the Registrar of Trademarks within a period of six months after the date on which the earliest application was filed for the registration of the same or substantially the same trademark for use in association with the same kind of goods or services. Such a priority declaration may be filed in one of the following ways:

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

Should an error be made in a priority declaration concerning the date or country of filing of the earlier application, the Office will permit the declaration to be amended to correct the 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, goods, services or country indicated in the declaration since it is considered that such an amendment would be inconsistent with subsection 34(1) of the Trade-marks Act.

Subsection 34(1) of the Trade-marks Act does not require that a priority declaration include the number of the earlier application. The Office, however, 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 declaration does not include the number of the earlier application, the Office will, pursuant to subsection 34(2) of the Trade-marks 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 Trade-marks Act does not require the declaration to include the number, the Office considers that an amendment of the number is permitted by the applicant as of right in accordance with Rule 30 of the Trade-marks Regulations.

For the purposes of the priority declaration referred to in paragraph 34(1)(a) of the Trade-marks 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. With respect to goods or services, it is sufficient if the declaration 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. If, however, an applicant chooses to limit the priority declaration to goods only, to services only, or to specified goods and/or services, the limitations to the goods or services covered by the priority declaration may be made at any time 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 in substance to be the making of a new priority declaration outside of the time limits permitted by paragraph 34(1)(a).

Dies Non

As per the Office practice notice entitled Dies Non published January 30, 2008, and subsection 66(1) of the Trade-marks Act, any trademark 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.

Since section 34 of the Trade-marks Act is subject to the provisions of section 66 of the same, both the online filing system and Intrepid are programmed to automatically calculate the allowable six-month period and the dies non practice with respect to priority claims. As such, once a priority claim has been entered in our system by operations staff, there is no need to question the claim.

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 Trade-marks 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 initial claim, it is the examiner's responsibility to properly apply the Office practice with respect to priority claims.

II.7.4 Applications Based on Proposed Use in Canada — Subsection 16(3), Paragraph 30(e), Subsection 40(2)

II.7.4.1 Explanation of Proposed Use Provision

Paragraph 30(e) provides for the submission of an application to the Trademarks Office based on proposed use of a trademark in Canada. Thus, a person may apply for registration of a trademark on the basis of intended use in Canada by stating that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trademark in Canada.

Since actual use of the trademark in Canada in association with the applied for goods or services is only required to commence prior to registration (subsection 40(2)), this provision allows an applicant to determine the registrability of the mark before embarking on costly advertising campaigns or before investing large sums on labelling or packaging materials. The applicant also obtains an entitlement date corresponding to the day the application is filed in Canada.

An application based originally on proposed use may not be amended to claim a date of first use in Canada as such an amendment would be contrary to Rule 31(d) (see Airwick Industries Inc. v. Metzner (1982), 75 C.P.R. (2d) 55; Champagne Moet & Chandon v. Ridout Wines Ltd./Les Vins Ridout Ltee (1983), 77 C.P.R. (2d) 63; and Societe Nationale Elf Acquitaine v. Spex Design Inc. (1988), 22 C.P.R. (3d) 189).

A claim of proposed use may not be added to an application after it has been advertised as such an amendment would be contrary to Rule 32(c).

As well, pursuant to Rule 32(d), an applicant will not be permitted to change the basis of the application from reliance on proposed use in Canada to reliance on use and registration abroad after advertisement.

II.7.4.2 Declaration of Use — Subsection 40(2)

After the application containing a proposed use claim is allowed, the applicant must, in accordance with subsection 40(2) of the Trade-marks Act, file a declaration of use stating that use of the mark in Canada has commenced in association with all or some of the goods or services covered by the application. If the trademark has only been used in association with some of the goods or services, the mark may only proceed to registration in respect of those goods or services. If the applicant itself does not intend to use the trademark, the declaration of use required can be submitted by the applicant's licensee or successor in title.

A licensee is an entity licensed by or with the authority of the owner of a trademark to use the trademark in a country. The owner has, under the license, direct or indirect control of the character or quality of the goods or services. Accordingly, the use, advertisement or display of the trademark in that country by that entity, has, and is deemed always to have had, the same effect as such use, advertisement or display of the trademark in that country by the owner. See also the subsection 50(1) of the Trade-marks Act.

The format in which a Declaration of Use may be set out is as follows. Use of the identical format is not required, provided that the same information is given.

Declaration of Use

File Number: __________

Trademark: __________

Applicant's Name: __________

I declare:

That since the filing of this application for registration of the trademark, the applicant, by itself and/or through a licensee, has commenced the use in Canada of the trademark claimed in the said application in association with (Please select one box only):

___ All the goods and/or services specified in the application.

___ Only the goods and/or services shown on the attached page.

II.7.4.3 Abandonment under Subsection 40(3)

Pursuant to subsection 40(3), an application for a proposed trademark is deemed to have been abandoned if a declaration of use is not received by the later of:

  1. six months after the Notice of Allowance by the Registrar, referred to in subsection 40(2); and
  2. three years after the date of filing of the application in Canada.

The Notice of Allowance issued by the Trademarks Office will specify the response date based on the foregoing criteria.

Extensions of Time — Section 47

(See also the practice notice entitled Extension Fee and Refunds)

Upon the expiration of the time limit to file a declaration of use, the Trademarks Office will grant an extension of time of six months if the request is justified and the applicant pays the prescribed fee as set out in Item 9 of the Tariff of Fees of the Trade-marks Regulations.

If a reason is not provided that would justify the extension of time, the Office will refuse the extension of time and abandon the application.

Where the applicant requires approval from a government department before use of the trademark can begin, the Office will grant an extension of time of one year. Specifics of the government department from which the applicant is seeking approval will be required.

Significant and Substantive Reasons

(See also the practice notices entitled Extensions of Time to File a Declaration of Use and Declaration of Use - Significant Substantive Reasons)

The Trademarks Office will require significant and substantive reasons to support a request for an extension of time that extends beyond the period of three years from the original deadline to file a declaration of use. The determination of whether a reason is significant and substantive will be decided on an individual basis.

II.7.5 Applications for Certification Marks — Sections 23, 24 and 25 and Paragraph 30(f)

(See also the practice notices entitled Certification Marks and Certification Marks - Compliance with Paragraph 30(f))

II.7.5.1 Definition of Certification Mark

A certification mark is defined in section 2 of the Trade-marks Act as "a mark that is used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard with respect to:

  1. the character or quality of the goods or services,
  2. the working conditions under which the goods have been produced or the services performed,
  3. the class of persons by whom the goods have been produced or the services performed, or
  4. the area within which the goods have been produced or the services performed,

from goods or services that are not of that defined standard".

According to paragraph 30(f) and subsection 23(1), an applicant may file an application to register a certification mark as long as he/she is not engaged in the manufacture or sale of goods or the performance of services such as those covered by the mark.

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 mark 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 use it as an ordinary trademark to distinguish those same goods or services from the goods or services of others, as the co-existence thereof would directly contradict the claims to use made in each application.

II.7.5.2 Use of Certification Mark

An example of a certification mark is one registered by a trade association to identify goods or services of its members. Thus, 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.

Note: A certification mark can be based on a subsection 16(2) claim; however, an application for registration of a certification mark based on proposed use is not acceptable in view of the definitions of "certification mark" as found in section 2 and in view of section 23 and paragraph 30(f) of the Trade-marks Act.

II.7.5.3 Descriptive of Place of Origin — Section 25

An application for registration of a certification mark must satisfy essentially the same registrability requirements under section 12 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 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.

II.7.5.4 Data on Application

The examination of an application to register a certification mark requires determining that the following provisions have been met.

  1. The applicant cannot be engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those associated with the certification mark pursuant to subsection 23(1) of the Trade-marks Act.
  2. When the mark is identified by a geographical term, pursuant to section 25 of the Trade-marks Act the applicant must be the administrative authority or commercial association of the area indicated by the mark.
  3. Paragraph 30(f) of the Trade-marks Act requires an application for the registration of a certification mark to contain particulars of the defined standard referred to in the definition of "certification mark" in section 2 of the Trade-marks Act.
    • In view of the decision of the Trademarks Opposition Board in Molson Breweries v. Labatt Brewing (1996), 69 C.P.R. (3d) 274 in respect of the trademark KOKANEE & Design, the Office does not accept an application for the registration of a certification mark as complying with the requirements of paragraph 30(f) of the Trade-marks Act, unless the application sets out in a meaningful way particulars of the defined standard that the use of the mark is intended to indicate. To be meaningful, the particulars set out should allow a member of the public to ascertain the precise nature of the defined standard that the use of the mark is intended to indicate.
    • An acceptable defined standard may include details on the qualifications required from the persons producing the goods or providing the services or norms of quality or performance or production of the goods and services, etc.
    • Where the defined standard is very lengthy or where certain details of the standard may change from time to time, it is permissible for the applicant to include a brief summary of the standard in the trademark application and to refer to another document for the details of the standard, provided however that at least the relevant portions of the other document are available to and easily accessible by the public. To ensure that any such other document is available to and easily accessible by the public, it is highly recommended that the applicant provide a copy of the complete document describing the details of the defined standard. Please note that a reference to a web link is not desirable since, a web link may no longer exist and therefore the defined standard details would no longer be accessible to the general public. If the document is only available upon the payment of a fee, this would be considered unacceptable and contrary to the provisions of paragraph 30(f) of the Trade-marks Act.
    • 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.
    • Example of defined standards in registered certification marks:
  1. The certification mark must be used in Canada by licensees of the applicant in the case of an application based on use in Canada.
  2. In the case of a foreign applicant relying on registration and use abroad, a certified copy of the foreign registration must be furnished. The corresponding registration need not cover a certification mark. That is, the foreign applicant may have used the trademark abroad as an ordinary mark even though he/she now wishes to register it as a certification mark in Canada. Conversely, a trademark registered and used as a certification mark abroad may be offered for registration as an ordinary trademark in Canada.
Certification Mark — Lengthy Defined Standard

The Office practice notice of July 15, 1998 provides that the applicant may provide a summary of the defined standard in the application as long as "the relevant portions of the other document are available to and easily accessible by the public".

Where the details of the defined standard are very lengthy, the applicant is still required to make a copy available to the public and include the name and a brief summary of the relevant portions of the document relied upon in the application. 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.

The particulars of the defined standard must accompany the application since subsection 29(1) of the Trade-marks Act requires that "the documents on which the entries therein are based…shall be open to public inspection during business hours…". Therefore, it is not acceptable for the applicant to provide a Web or Internet 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 would allow the applicant to submit 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 Trade-marks Act.

Changing Applications Between Regular Trademark Marks and Certification Marks

Subsection 23(2) of the Trade-marks Act provides that the owner of a certification mark may license others to use a trademark and that such use is considered to be use by the owner.

Subsection 50(1) of the Trade-marks Act provides that use of a trademark through a licensee is considered to have the same effect as use by the trademark owner.

Therefore, notwithstanding Rule 31 of the Trade-marks Regulations, the Office considers that an application for a regular trademark used by the applicant may be converted to an application for a certification mark used through a licensee.

The Office considers such an amendment to be clarification that the applicant's use of the trademark has been through a licensee as a certification mark and not contradictory to the statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services.

An amendment from an application for a certification mark used through a licensee to an application for a regular trademark used by the applicant is also acceptable. The Office will accept that the applicant's use of the regular trademark has been through a licensee and will not consider such use to be contradictory to the statement made in the initial application that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services.

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.

II.7.6 Applications to Extend Statement of Goods or Services — Paragraph 41(1)(c) and Subsection 41(2)

Paragraph 41(1)(c) of the Trade-marks 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 Trade-marks 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.

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. This is an acceptable practice, however a new serial number will have to be awarded and, in the case of design marks, a drawing must be filed. The filing date remains the same.

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

Under the same conditions, the Office will also permit the applicant to revert to an ordinary application for registration when the registration on which an extension of goods or services application is dependent becomes expunged or cancelled. In addition, examiners should inform the applicant of the expungement and of the possibility of reverting to an ordinary application. If the applicant requests this change, a revised application must be filed deleting reference to the registration on which the extension application was based.

Affidavit of Continuous Use

For trademarks previously registered pursuant to subsection 12(2) of the Trade-marks Act, section 29 of the Unfair Competition Act or Rule 10 of the Trade Mark and Design Act, where the registration of the mark 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 section 32 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 following should be kept in mind:

  1. The evidence must establish that use of the trademark has been continuous in relation to the goods or services originally registered, from the date of the initial evidence establishing secondary meaning until the date of application for the extended statement. The evidence should also show use of the trademark in respect of the extended goods or services from the date of use in Canada until the date of application for the extension statement.
  2. The application to extend the goods or services must be based on use in Canada.
Trademarks Previously Registered Pursuant to Section 14 of the Trade-marks Act

An applicant may not rely on the evidence submitted with the original registration in an extension of goods or services application unless the evidence in support of the original registration filed pursuant to section 14 also related to the goods or services for which the application to extend is filed.

For example, if the foreign registration and evidence filed in support of the initial registration showed that the trademark was not without distinctive character in Canada in association with "shoes, books, tennis rackets and perfume", yet registration was sought only in relation to "shoes and tennis rackets" the applicant could claim the benefit of section 14 in a subsequent application to extend the statement of goods in relation to "books and perfume" as the evidence already filed supports the claim.

However, if the goods or services in the application to extend were not included in the certified copy and in the evidence filed in support of the section 14 claim on the initial registration, new evidence pursuant to either subsection 12(2) or section 14 must be submitted in relation to the additional goods or services. It should be noted that it is not sufficient that the additional goods or services in the application to extend fall within the same class as those for which section 14 evidence was originally filed. Therefore, goods extended to "golf clubs" would not be supported by evidence filed in relation to "tennis rackets".

The mere filing of an affidavit of continuous use in Canada is neither appropriate nor acceptable in the foregoing situation since a section 14 claim is not based on use in Canada.

The preceding practice applies only to trademarks which, as a whole, contravene either paragraph 12(1)(a) or 12(1)(b) of the Trade-marks Act.

II.7.6.1 Other Amendments Under Paragraph 41(1)(c)

The application to amend a registration to extend its statement of goods or services may include a request for other amendments affecting the statement of goods or services in respect of which the trademark is registered. Amendments of the statement of goods or services are authorized by paragraph 41(1)(c) of the Trade-marks Act and include deletion of certain goods or services from the statement of registration or re-statement of the goods or services for purposes of clarification.

II.7.6.2 Drawings and Specimens - Extension of Goods or Services

No drawings or specimens are normally required to accompany an application covering an extension of goods or services. If, however, the trademark was registered under the Trade Mark and Design Act or the Unfair Competition Act and if no drawings are on file, one will be requested. See also sections II.6.2 and II.6.3 of this Manual.

III Search / Confusion

III.1 Purpose of the Search

In addition to being conversant with the Trade-marks Act and Regulations and ensuring that an application complies with their provisions, examiners also play a role in protecting the rights of other owners and their trademarks. This is done by examining the results of the search. The purpose of the search is to determine whether the mark applied for:

  1. is confusing with a trademark which is the subject of a pending application;
  2. is confusing with a trademark which is registered, pursuant to paragraph 12(1)(d);
  3. consists of, or so nearly resembles as to be likely to be mistaken for, a mark which is protected under section 9 (see also paragraph 12(1)(e));
  4. is a denomination the adoption of which is prohibited by section 10.1 (see also 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 also paragraphs 12(1)(g), (h) and (h.1)).

If the trademark applied for is confusing with a trademark which is the subject of a pending application, examiners must determine who is entitled to registration and object to the application of the non-entitled person.

If the trademark applied for is confusing with a registered trademark, an objection will be raised pursuant to paragraph 12(1)(d) of the Trade-marks Act.

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

If the trademark applied for 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 will be raised pursuant to paragraph 12(1)(f) of the Trade-marks Act.

If the trademark applied for 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 will be raised pursuant to paragraph 12(1)(g), (h) or (h.1) of the Trade-marks Act, as applicable.

Note: The Registrar of Trade-marks 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 Trade-marks Act.

The search is a key operation in the examination of a trademark application. Its importance cannot be minimized, nor can the fact that examiners are the first to consider possible confusion as to source. The search is a great responsibility and a careless or incomplete search might result in an invalid registration or cause considerable embarrassment and expense to the owner or to this Office. Keeping in mind that registration of a trademark gives to the owner exclusive right to use of that mark in Canada in respect of the goods or services in association with which it is registered, examiners should be consistent in the manner of consulting the search results and also make use of all pertinent reference sources.

III.2 Definition of Confusion — Subsection 6(2)

Section 6 of the Trade-marks Act, particularly subsection 6(2), describes the manner and circumstances in which one trademark would cause confusion with another. Subsection 6(2) states the following:

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.

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.

III.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 Trade-marks 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 in appearance or sound or in the idea 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, the Federal Court of Canada dismissed an appeal from an Opposition Board decision which held that DAYPAK for proposed use in association with "pharmaceutical dispensing packages" was not confusing with DIALPAK registered for "a tablet dispenser", Heald J. discussed the "surrounding circumstances" in the following from page 166:

Having given this matter my best consideration, I conclude that the two trade marks in question do not closely resemble one another in appearance or sound or in the ideas suggested by them. I have reached this conclusion after considering the subject marks on a first impression basis, and not by way of detailed comparison. In my view, the two marks do not appear similar nor do they sound similar. Finally, the ideas suggested by the two marks are totally different. Appellant's mark clearly suggests a dial package tablet dispenser from which you "dial your tablet" or pill. On the other hand, respondent's mark has no dial connotation but rather, relates to day or daily which is a deliberate course followed by the respondent to create in the minds of the trade, an association between its trade mark and the daily nature of the product.

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 rule is that where elements of a particular trade mark are common to the trade, they cannot be appropriated to the exclusive use of a particular trader because they cannot be said to have in them the vital element of distinctiveness. The evidence is that apart from appellant's mark DIALPAK, there are several hundred other trade marks registered for dispensers or packages in the Canadian Trade Marks Office containing the letters "pak, pac or pack" and many of them relate to pharmaceutical products. It seems to me that where, in a case like this, the two marks have a common suffix, this serves to make members of the trade more alert for a different prefix and thus minimizes the likelihood of confusion.

The surrounding circumstances are not exhaustive, nor are they to be given 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.).

III.2.1.1 Paragraph 6(5)(a) — Inherent Distinctiveness

A trademark which is created, unique, and non-descriptive is deemed to be inherently distinctive. If an inherently distinctive mark is the subject of a pending application, it would be considered to be a strong candidate for registration. If such a mark is already registered, it is the examiners' responsibility to protect those rights which accrue as a result of its inherent distinctiveness.

For example, it is clear that a mark such as KODAK, which is a purely arbitrary word, possesses more inherent distinctiveness than a mark such as CORTI-VET which may be used in association with a veterinary preparation containing cortisone. In other words, the quality of "inherent distinctiveness" is easily attributed to the mark KODAK because, unlike CORTI-VET, KODAK has no suggestive or descriptive properties, nor does it suggest any other relation to the goods photographic film or photographic equipment. When it comes to actually comparing two word marks, 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.

III.2.1.2 Paragraph 6(5)(b) — Length of Time Used

Generally speaking, examiners are limited in their ability to make judgments about confusion based on the length of time the trademarks have been in use. Evidence of actual instances of confusion will be unavailable to them. However, such evidence will be considered during opposition proceedings as well as proceedings of the Federal Court of Canada. In judgments of this nature, it is generally accepted that a mark which has seen substantial use over a long period of time has also been known to a considerable extent and therefore deserves more protection than a mark which has seen less use over a short period of time and therefore has been known to a lesser extent.

Where both marks 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 marks. 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 mark MR. SUBMARINE although there was no evidence of actual confusion despite ten years of concurrent use in the same area.

III.2.1.3 Paragraph 6(5)(c) — Nature of Goods or Services

When making a decision concerning the issue of confusion, examiners must not only focus on the inherent distinctiveness of the marks, but also on the nature of the goods or services to be associated with them. Therefore, examiners must clearly understand the description of goods or services as it appears on the application form, as well as the classification of those goods or services.

Examiners must also consider whether the goods or services covered by the application and the confusing mark are of the everyday sort, bought casually, or if they are expensive, thereby calling for a high degree of selection on the part of the purchaser See General Motors Corp. v. Bellows (1949), 10 C.P.R. 101 at 116-117. If the former case applies, examiners must be assured that the applicant's mark is sufficiently different from the cited mark that consumers will not confuse them in the course of routine and often hasty shopping. If the latter applies, examiners can allow for more subtle or complex differences between marks, since the purchaser will be taking more time to choose the item and therefore the mark associated with it.

Pharmaceuticals

When assessing confusion between trademarks used in the pharmaceutical industry, examiners must exercise special care to avoid confusion in view of the serious consequences which may arise through mistakes or negligence.

In Mead Johnson & Co. v. G.D. Searle & Co. (1967), 53 C.P.R. 1, Justice Dumoulin stressed the importance of avoiding confusion with respect to the selling and dispensing of pharmaceutical products even in those instances where the products in question are sold only by means of prescription and are only dispensed by pharmacists from written instructions from a physician.

Further, it is important to note that in the decision of the Supreme Court of Canada in Ciba-Geigy Canada Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 it was determined that in the field of prescription drugs, the customer includes physicians, pharmacists, dentists and patients.

III.2.1.4 Paragraph 6(5)(d) — Nature of the Trade

In assessing the nature of the trade, a relevant consideration would be to determine if the goods are sold directly by the manufacturer through wholesalers, retailers or catalogues, or by telephone. If the goods are ordered by telephone, the sound of the trademark becomes even more important than when consumers can see the mark affixed to the goods. Wholesalers may not be confused since they deal directly with manufacturers, but consumers do not have specialized knowledge of the trade and therefore could be confused.

If examiners are initially uncertain as to whether the channels of trade are the same for the marks, they should cite the confusing mark in an official report and require the applicant to argue the merits of the citation. If the applicant convincingly argues that the channels of trade are different, examiners will consider this in deciding whether or not to withdraw the objection.

However, examiners should not necessarily take into account a submission that since the goods are not sold in the same places the channels of trade are different and therefore the marks are not confusing. 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.

III.2.1.5 Paragraph 6(5)(e) — Degree of Resemblance between the Marks

When dealing with the issue of confusion between marks, examiners must consider the degree of resemblance in the appearance, sound or ideas suggested by the marks. If the mark applied for appears in the same script as the mark on the Register, this factor must be taken into consideration. If two marks are comprised of a similar arrangement of word and design, or if two marks suggest the same common idea, confusion may occur.

As well, examiners will have to carefully consider two marks that sound alike, even though they appear dissimilar in written form. For example, a consumer might confuse the mark PHARSYDE with the mark FARSIDE, even though the marks look different.

Marks may also be found to be confusing if they suggest the same idea even though they do not necessarily sound alike or look alike. For example, a consumer might confuse the mark GRILLMASTER with the mark BROILMASTER.

Examiners must consider the likelihood of confusion between trademarks in either or both of Canada's official languages. In Scott Paper Co. v. Beghin-Say S.A. (1985), 5 C.P.R. (3d) 225, Strayer J. stated at page 231:

I have no doubt that the Registrar of Trade Marks and the court should be alert to the possibility of confusion between trade marks in either or both of Canada's official languages. This is not only required by the constitutional and legal status of both languages at the federal level, but is also a reflection of the fact that there are several million bilingual Canadians who may associate words in one official language with their equivalent in the other.

In Rose v. Fraternité Interprovinciale Des Ouvriers en Electricité (1977), 32 C.P.R. (2d) 42, Walsh J. found a design mark having the words FRATERNITÉ INTERPROVINCIALE DES OUVRIERS EN ELECTRICITÉ to be confusing with an earlier registration of a design mark having the words INTERNATIONAL BROTHERHOOD OF ELECTRICAL WORKERS. See also Johnson & Johnson Ltd. v. Philippe-Charles Ltd. (1974), 18 C.P.R. (2d) 40, referred to therein.

When assessing confusion between trademarks, the first word or first syllable in a trademark is more important for the purpose of distinction than those that follow. 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.

III.3 Test of Confusion

The test of confusion is one of first impression. Consumers may be aware of one trademark, but imperfect recollection may cause them to mistake that mark for another. Examiners must put themselves in the position of consumers 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.

After reviewing a number of cases relating to the determination of confusion in British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48, President Thorson made the following summation at pages 57-58:

In determining whether the registration of a trademark should be expunged on the ground of its similarity to a mark already registered for use in connection with similar wares it is not a correct approach to solution of the problem to lay the two marks side by side and make a careful comparison of them with a view to observing the differences between them. They should not be subjected to careful analysis; the Court should rather seek to put itself in the position of a person who has only a general and not a precise recollection of the earlier mark and then sees the later mark by itself; if such a person would be likely to think that the goods on which the later mark appears are put out by the same people as the goods sold under the mark of which he has only such a recollection, the Court may properly conclude that the marks are similar. The reasons for this guiding rule are sound. Similar marks are not identical marks and similarity of marks implies some difference between them, for without any difference they would be identical. A careful analysis of the marks with a view to ascertaining differences fails to observe this important distinction. Moreover, it is the likely effect of the use of the later mark on the minds of ordinary dealers or users generally that must be considered and people as a rule have only a general recollection of a particular thing, rather than a precise memory of it.

In Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1, Cattanach J. stated at page 5:

To determine whether two trade marks are confusing one with the other it is the persons who are likely to buy the wares who are to be considered, that is those persons who normally comprise the market, the ultimate consumer. 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.

In considering the similarity of trade marks it has been held repeatedly that it is not the proper approach to set the marks side by side, and to critically analyze them for points of similarities and differences, but rather to determine the matter in a general way as a question of first impression.

In this case, the mark TSAREVITCH, for alcoholic beverages, was found to be confusing with the mark TOVARICH for the same goods.

Where the mark or marks being considered are composite marks, it is the totality of the marks which must be considered. In the British Drug Houses case, President Thorson 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.

In determining confusion, examiners should take into account only the mark applied for by the applicant and only the trademark as registered. The fact that the mark applied for is used in association with a corporate name or logo is of no significance because that is not the mark for which the exclusive right is sought. Commenting on this in British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48, President Thorson stated at page 55:

... the Court must not allow its consideration of the main issue, namely, whether there is a likelihood of confusion in the minds of dealers or users as a result of the use of the mark in dispute, to be deflected by taking irrelevant matters into account. The respondent filed samples of the bottles in which the respective preparations of the parties are sold. These differ somewhat in shape and there are differences in the labels. The Court is not concerned with the bottles in which the preparations are sold or the labels on them but with the trade marks under which they are put out. It is the effect of the trade marks, and not of the bottles or labels, that must be considered. If the use of the marks on the wares is likely to result in confusion as to the wares, differences in the bottles or labels might serve to lessen the confusion but do not eliminate it. Differences in the bottles or labels cannot turn similar trade marks into dissimilar ones. Such differences have nothing to do with the issue before the Court, for there is no reason why either party should continue the use of the present bottles or labels and nothing to prevent either of them from changing the present shape of the bottles or form of labels. Neither the bottle nor the label is part of the trade mark. The protection given by the registration extends to any normal use of the trade mark and is not confined to any particular use of it such as its use with a particular shape of bottle or on a particular form of label.

III.3.1 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.

III.3.2 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 Trade-marks Act, the owner of the registered trademark shall be notified, by registered letter, of the advertisement of the application.

III.4 Searching

A complete search must include a search of pending, registered, abandoned and refused marks under the Trade Marks and Design Act, the Unfair Competition Act, the Trade-marks Act and the Newfoundland Register. A search of the refused and abandoned marks 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 registrants are useful to examiners, particularly in cases where the applicant is the owner of previously registered trademarks which would otherwise be found confusing. See also section 15 of the Trade-marks Act.

The list of geographical indications is also searched and section 11.18 of the Trade-marks Act should also be consulted when the application covers such goods.

Subject matter protected pursuant to Article 6ter of the Paris Convention should be consulted when searching marks comprising flags, coats of arms, emblems and the like. See paragraph 9(1)(i) of the Trade-marks Act. The reasons for this are discussed in section IV.11 of this Manual.

III.5 Discovering a Confusing Mark

III.5.1 Confusion with a Registered Mark — Paragraph 12(1)(d)

If the trademark applied for is confusing with a registered trademark, examiners must raise an objection pursuant to paragraph 12(1)(d) of the Trade-marks Act. Subsection 37(2) of the Trade-marks Act dictates that the applicant must be notified of the reasons for the objection and be given an opportunity to respond and the applicant's response will be evaluated. If the examiner still finds that the mark applied for is confusing with the registered mark, the application may be refused pursuant to subsection 37(1) of the Trade-marks 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 mark struck from the register pursuant to section 57, or by requesting that a notice be sent pursuant to sections 44 or 45 of the Trade-marks Act.

III.5.2 Associated Marks — Section 15

This section of the Trade-marks Act provides that "confusing trade-marks are registrable if the applicant is the owner of all such trade-marks, which shall be known as associated trade-marks." If the applicant is the owner of other marks which are confusing with the applied for trademark, examiners will not raise an objection that the marks are confusing but will associate all of the marks.

Minor variations in the manner in which the owner's name is set out may not necessarily indicate a difference in ownership of the marks. Where it is clear that the identity of the owner of the confusing marks has not changed, the examiner will associate all of the marks. For example, a trademark owned by ABC Co. Ltd. will be associated with confusing marks owned by ABC Co. Ltd. doing business as XYZ Ventures and will also be associated with confusing marks owned by ABC Co. Ltd. trading as JKL Enterprises.

In cases where a partial assignment has been recorded, the statement of association should specify the goods or services in respect of which the marks are associated. For example, the mark HABITANT has partial owners and would be associated in the following manner: associated mark TMDA 46783 in respect of the goods marked (2).

The Trademarks Office may correct any error, in accordance with Rule 33, by removing the association between marks which, through clerical error, should not have been associated initially.

III.5.3 Confusion with Certification Mark

Section 24 of the Trade-marks Act provides for the registration of a mark that is confusing with a registered certification mark by a licensee of the certification mark. This can occur only if the owner of the registered certification mark consents and if the marks exhibit an "appropriate difference." The mark must be used by the licensee "to indicate that the goods or services in association with which it is used have been manufactured, sold, leased, hired or performed by him as one of the persons entitled to use the certification mark." The Registrar must, however, expunge the registration should the owner withdraw consent, or upon cancellation of the registration of the certification mark. See also subsections 23(2) and (3) of the Trade-marks Act.

III.5.4 Confusion with Newfoundland Registrations

Sections 67 and 68 of the Trade-marks 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 by the Trade-marks Act. As such, examiners will not raise a 12(1)(d) objection for trademarks deemed to be confusing with Newfoundland registrations. Instead, the examiner will draw the applicant's attention to the Newfoundland registration, pursuant to subsection 67(1) of the Trade-marks Act and inform them that they may request a restricted registration whereby Newfoundland is excluded.

Where an application for a trademark is confusing with a Newfoundland registration in respect of only some of the applicant’s goods or services, the applicant may request a restricted registration excluding Newfoundland 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, subject to the provisions of subsection 67(1) of the Trade-marks Act.

Since trademarks registered pursuant the laws of Newfoundland prior to April 1, 1949 do not form part of the register, the types of amendments permitted under the Trade-marks 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 would accept an affidavit or statutory declaration stating the current name of the owner who registered the trademark under the laws of Newfoundland.

III.6 Confusion with Co-pending Applications

If the mark applied for is confusing with a mark which is the subject of a pending application, the examiner must determine who is entitled to registration and object to the application of the non-entitled person.

III.6.1 Persons Entitled to Registration

(See also the practice notice entitled Entitlement – Confusing Marks)

Paragraph 37(1)(c) of the Trade-marks Act stipulates 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.

In Attorney General of Canada v. Effigi Inc.(2005), 41 C.P.R. (4th) 1, the Federal Court of Appeal determined that during the examination process, the Registrar shall not consider dates of first use or making known as a relevant consideration under paragraph 37(1)(c) of the Trade-marks Act. Therefore, when pending marks are confusing, the applicant with the earlier filing date or priority date will be considered to be the person entitled to registration of the trademark.

Where the Trademarks Office considers that the provisions of paragraph 37(1)(c) apply, an applicant with a later filed application claiming an earlier date of first use or making known, who wishes to oppose the earlier filed application, will be able to request extensions of time pending the completion of the opposition process.

III.6.2 Notification of Applicants

(See also the practice notice entitled Discontinuance of courtesy letters for co-pending confusing trademarks)

When confusion is apparent between pending trademarks and no other objections or requirements exist, examiners will immediately 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 date of filing or priority filing of the other application.

Where the non-entitled person's application encounters a co-pending confusing application which has been advertised in the Trademarks Journal, the non-entitled person will be notified of the objection citing the confusing trademark and be informed of the publication date.

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.

Note: An entitled application encountering a co-pending confusing application which is scheduled for advertisement but not yet officially published in the Trademarks Journal will be accepted for advertisement, as long as no other objections or requirements exist, notwithstanding that it may be too late to prevent the publication of the non-entitled mark. The deadline for the withdrawal of the approval notice in such a case is the actual date of publication. Examiners will issue a report advising the non-entitled party that a subsequent application has an earlier date of filing or priority filing and will withdraw the approval notice. If the co-pending confusing application is discovered after the publication date, then the process becomes irreversible since the finality of examination is the advertisement. See Beaver Knitwear Ltd. v. Registrar of Trade Marks (1986), 11 C.P.R. (3d) 257.

III.6.3 Same Entitlement Date

In cases where two applications have the same entitlement date, i.e., the same date of filing or priority filing, for similar or identical goods or services, both applications will be approved for publication. This is because it cannot be said that one applicant is entitled to registration over the other.

III.6.4 Abandoned Applications

Pursuant to paragraph 37(1)(c), an abandoned application cannot be cited against a pending application.

IV Examination of the Mark

IV.1 Purpose of Examination

A formal review of the application serves initially to establish its compliance with the requirements of section 30 of the Trade-marks Act. However, the study of the application also allows examiners to assess the character of the trademark, to become familiar with the goods or services associated with it, and to understand the nature of the business involved. Using this knowledge, examiners are then well prepared to undertake an examination of the mark itself and to determine its registrability. While an applicant can use a mark in association with goods or services for purposes of identification in the marketplace and call it a trademark, it is not necessarily registrable.

Upon receiving the application, examiners will carefully scrutinize its subject matter giving particular consideration to the following:

IV.2 Definition of Trademark

According to section 2 of the Trade-marks Act, a trademark means:

  1. a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
  2. a certification mark,
  3. a distinguishing guise, or
  4. a proposed trademark;

All trademarks are defined in terms of subject matter and purpose. The subject matter is "a mark". The purpose is defined in the same manner for an ordinary trademark, a distinguishing guise and a proposed mark and in a different manner for certification marks.

Although the word "mark" has not been specifically defined in the Trade-marks Act, it has been interpreted as being co-extensive with the word "symbol" as it appeared in the Unfair Competition Act and as co-extensive with the list of subject matter under the Trade Marks and Design Act. The exception is that the shaping of goods or their containers or a mode of wrapping or packaging goods has been separately defined as a distinguishing guise.

The subject matter protectable under the Trade Marks and Design Act was: "all marks, names, labels, brands, packages, or other business devices" used to distinguish the goods of any person. At present, a mark which is primarily functional or which has a characteristic appearance resulting from the process of manufacture or which consists of ornamentation applied to goods for the purpose of enhancing the appearance of the goods is not necessarily proper subject matter for a registrable trademark.

IV.3 Distinguishing Guises and Three-dimensional Marks

The requirements for registrability of a three-dimensional mark are dependent upon whether the mark falls within the definition of distinguishing guise in section 2 of the Trade-marks Act and accordingly upon whether the mark is a shaping of goods or their containers, or is a mode of wrapping or packaging of goods. If a three-dimensional mark does not fall within the definition of a distinguishing guise, then it may be registrable as an ordinary trademark, i.e. as the kind of trademark referred to in paragraph (a) of the definition of trademark in section 2 of the Trade-marks Act. On the other hand, if a three-dimensional mark falls within the definition of a distinguishing guise, then it may be registered only as a distinguishing guise (and is subject to the special requirements applicable to registration of distinguishing guises) and cannot be registered as an ordinary trademark. This is because the context in which the word "mark" is used in the definition of "trade-mark" indicates that it is used in a narrow sense that excludes a distinguishing guise. See Registrar of Trade Marks v. Brewers Association (1982), 62 C.P.R. (2d) 145.

If a trademark is filed as an ordinary mark, but is considered to be a shaping of goods or of their containers, or is a mode of wrapping or packaging of goods, or inherently related to the services, the trademark will be considered as falling within the definition of a distinguishing guise, and the applicant will be required to comply with the provisions of section 13 of the Trade-marks Act.

Where an application is filed for registration of a three-dimensional mark that is not a distinguishing guise, the application should include a description of the mark that makes clear that the trademark applied for is a three-dimensional mark. Where it is not clear whether an application is intended to cover a two-dimensional or a three-dimensional mark, the Office will ask the applicant for a written clarification.

The description provided by the applicant will be published in the Trademarks Journal.

IV.3.1 Two-dimensional Marks Applied to Three-dimensional Objects

As a general principle, where an application is for a two-dimensional mark, the drawing of the mark should show the mark in isolation and should not show the mark as applied to a three-dimensional object. Where a better understanding of the mark would be achieved by submitting a drawing showing the mark applied to a three-dimensional object, such a drawing will be accepted by the Office provided that the applicant complies with the following requirements:

  1. The three-dimensional object must be shown in dotted outline.
  2. The application must contain a description of the mark that makes clear that the application covers the two-dimensional mark only.
  3. The description of the mark must specifically state that the three-dimensional object shown in dotted outline in the drawing does not form part of the trademark.

Should the description or the drawing of the mark explicitly or implicitly indicate that the mark has, in whole or in part, a shape that is defined by the shape of a three-dimensional object, the mark will be considered to be a three-dimensional mark and must be identified as such in the description. The Office will not, however, object to a mark being identified as a two-dimensional mark merely because the description includes a statement that the mark (whether it consists of one or more elements) is applied in a particular position (or positions) on a three-dimensional object; such a statement is viewed as being merely a restriction on the scope of protection being claimed for a two-dimensional mark.

In cases where the drawing shows a mark applied to a three-dimensional object, and where the Office has doubts about an applicant's statement that its mark is a two-dimensional mark, the Office may request the applicant to submit a drawing showing the mark in a flat two-dimensional state; if the mark cannot be shown in a flat two-dimensional state, the Office will consider the mark to be a three-dimensional mark. The Office may also request the applicant to submit specimens of the trademark as used pursuant to Rule 29(c) of the Trade-marks Regulations.

In cases where the three-dimensional object shown in dotted outline is a shaping of goods or their containers, or a mode of wrapping or packaging goods, and the two-dimensional trademark includes a portion that is frosted, engraved, embossed or in any way traverses the three-dimensional object, the trademark will be considered to fall within the definition of a distinguishing guise since these characteristics are considered an integral part of the goods.

IV.3.2 Distinguishing Guises

Section 2 of the Trade-marks Act defines a distinguishing guise as:

  1. a shaping of goods or their containers, or
  2. a mode of wrapping or packaging goods

the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.

It should be noted that the words following paragraph (b), i.e. "the appearance of which ... by others", apply to both paragraphs (a) and (b). See Brewers Association v. Registrar of Trade Marks (1979), 42 C.P.R. (2d) 93.

An application for a distinguishing guise need not be limited to either only a shaping of goods or their containers on the one hand, or to only a mode of wrapping or packaging goods on the other hand. The Office considers that a distinguishing guise may include a combination of the elements described in both (a) and (b) of the definition. See Smith, Kline & French v. Registrar of Trade Marks (1987), 14 C.P.R. (3d) 432 at 435.

Where a trademark contains both elements that fall within the definition of a distinguishing guise and elements that do not fall within the definition of a distinguishing guise (e.g. the combination of the shaping of a good together with reading matter or colour appearing on the good), the special provisions in the Trade-marks Act concerning distinguishing guises (i.e. sections 13 and 32) are still considered to apply. See Registrar of Trade Marks v. Brewers Association (1982), 62 C.P.R. (2d) 145.

Pursuant to paragraph 13(1)(a) of the Trade-marks Act, the application should be filed on the basis of use in Canada only. If not, the applicant will be unable file the required evidence to show that the subject distinguishing guise had become distinctive in Canada at the date of filing.

IV.3.3 Colour

Trademarks that contain colour as an element are considered to be distinguishing guises if the colour forms part of a mode of wrapping or packaging goods the appearance of which is used for the purpose of distinguishing or so as to distinguish one person's goods or services from those of others. Further, as discussed above, where a trademark consists of the combination of colour and the shaping of a good or container, the special provisions in the Trade-marks Act concerning distinguishing guises are still considered to apply.

However, the following types of marks in particular are not considered to constitute a distinguishing guise and are registrable as ordinary trademarks (unless they form part of a mode of wrapping or packaging goods):

Applications for trademarks that are not distinguishing guises, that are not two dimensional and that consist of or include one or more colours applied to the surface of a three-dimensional object must contain i) a drawing or drawings showing the visible features of that object in dotted outline, and ii) a description indicating that the trademark consists of the particular colour or colours only insofar as they are applied to the particular object shown in the drawing.

The description and the drawings must of themselves clearly define what the trademark consists of and, although the Trademarks Office may request that specimens be furnished, the description should not itself refer to specimens since specimens are not an integral part of an application. See Novopharm v. Bayer (1999), 3 C.P.R. (4th) 305.

An example of an acceptable description is: "The trademark consists of the colour purple applied to the whole of the visible surface of the particular tablet shown in the drawing."

The description should not contain a statement to the effect that the three-dimensional object does not form part of the trademark since the object does form part of the trademark insofar as it shows the limits of the colour.

Lastly, colour should not be claimed as a feature of the trademark since in such cases the colour is not merely a feature of mark, but rather is the mark.

IV.3.4 Goods

The Office interprets the word "goods", in the definition of distinguishing guise, as meaning any articles that would normally be the subject of trade, i.e., sold, leased or otherwise distributed in the marketplace. In accordance with this interpretation, the word "goods" would not, for example, include fanciful three-dimensional objects that are created for the purpose of distinguishing goods or services but that are not articles that would normally be the subject of trade. The shaping of such a fanciful three-dimensional object would thus not fall within the definition of a distinguishing guise and may be registrable as an ordinary trademark.

IV.3.5 Shaping of Goods or Their Containers

Since in the definition of distinguishing guise in section 2 of the Trade-marks Act, the words "the appearance of which ... by others" apply to paragraph (a), it is clear that a guise consisting of a shaping of goods or their containers can be used for the purpose of distinguishing either goods or services or both. However, taking into account the over-all scheme of the Trade-marks Act and in particular the underlying objectives of the provisions on guises, the Office considers that not every mark consisting of the shaping of goods or their containers is required to be treated as a guise.

Based upon section 13 of the Trade-marks Act, the key objectives of the distinguishing guise provisions appear to be to prevent the registration of a mark from interfering with the use of any utilitarian feature and from unreasonably interfering with the development of any art or industry. In order to give effect to these objectives without imposing an undue burden on all applicants for shape marks, the Office view is that whether or not a mark consisting of a shaping of goods or their containers must be treated as a guise depends upon the nature of the relationship between, on the one hand, the goods or their containers, the shaping of which constitutes the mark, and, on the other hand, the goods or services covered by the statement of goods or services in the application.

The Office position is that where an applicant wishes to register, in association with services, a three-dimensional mark consisting of a shaping of goods or their containers, the application is required to be for a distinguishing guise only if the goods or the containers are inherently related to the services. Otherwise, the application may be made for registration as an ordinary trademark. Under this approach, an application for the registration of the shaping of food containers for use in association with fast food restaurant services would need to be filed for registration as a guise but an application for the shape of a parachute for use in association with restaurant services could be filed for registration as an ordinary trademark.

Where an applicant wishes to register, in association with goods, a three-dimensional mark consisting of a shaping of goods or their containers, the Office position is that if the goods, the shaping of which or of their containers constitutes the three-dimensional mark, are covered by, or are closely related to, the goods that are included in the statement of goods in the application, the application must be for a distinguishing guise. Otherwise, the application may be made for registration as an ordinary trademark.

A "shaping of goods or their containers" is considered to include both a shaping of the entirety of a good or its container, or a shaping of a part of a good or its container, but not necessarily the applicant's goods. To interpret the definition of distinguishing guise as being limited to a shaping of the entirety of a good or its container is not considered to be consistent with the underlying purpose of the special provisions in the Trade-marks Act governing distinguishing guises. Such an interpretation would allow an applicant to easily circumvent the limitations in section 13 of the Trade-marks Act since applicants could then delete some minor detail from the overall shaping and obtain protection for that as an ordinary trademark.

Three-dimensional forms that are not an integral part of a good or its container and that are attached to a good or its container for the purpose of distinguishing goods or services are not considered to be a part of the good or its container for the purposes of the definition of a "distinguishing guise". Whether a three-dimensional form is or is not an integral part of the good or its container is necessarily a question of fact that depends on all the circumstances of each case. By way of example, the Office would normally consider a hood ornament to not be an integral part of an automobile and thus the three-dimensional form of a hood ornament could be registered as an ordinary trademark for use in association with automobiles. On the other hand, the front grill or the taillight of an automobile would be considered to be an integral part of an automobile and thus the three-dimensional form of a front grill or taillight could, if the statement of goods in the application covered automobiles, only be registered as a distinguishing guise.

IV.3.6 Mode of Wrapping or Packaging Goods

When a guise consists of a mode of wrapping or packaging, the appearance of the mode is considered to include all the visual features of the mode shown in the drawing or drawings submitted as part of the application for registration, with the exception of any features that have been identified as not forming part of the guise. Thus any reading matter shown in the drawing(s) would form part of the guise unless the reading matter had been expressly excluded.

The Office considers that a mode of packaging goods would include containers or holders and that the appearance of such a mode of packaging, that would be protectable as a distinguishing guise, could include the combination of the shape of a container and other visual features such as reading matter appearing on the container. See Smith, Kline & French v. Registrar of Trade Marks (1987), 14 C.P.R. (3d) 432 at 435.

IV.3.7 Evidence of Acquired Distinctiveness

Paragraph 13(1)(a) of the Trade-marks Act provides that a distinguishing guise is registrable only if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration. As such, the evidence must be restricted to the period between the date of first use in Canada and the date of filing of the application. If a particular day of first use has not been provided, the last day of the month will be used, and in the absence of both a day and a month, the last day of the year will be used.

To be distinctive, the guise must have come to mean to purchasers that the goods or services sold in association with the guise come from one source, i.e. the guise must function in the marketplace to distinguish the goods or services of one person from those of others. To satisfy the test of distinctiveness it is not sufficient that a trademark be merely distinctive in channels of trade as, for example, to the manufacturer or wholesaler, but it must be distinctive to all who are probable purchasers including the ultimate consumer. See Parke Davis v. Empire Laboratories (1963), 41 C.P.R. 121 at 145 and Calumet Manufacturing v. Mennen (1991), 40 C.P.R. (3d) 76 at 89-90.

Subsection 32(2) of the Trade-marks Act requires the Registrar, having regard to the evidence adduced, to restrict the registration to the goods or services in association with which the distinguishing guise has been so used as to have become distinctive. The onus on the applicant to establish that a distinguishing guise has become distinctive in respect of a particular good or service is a heavy onus and that onus is particularly severe where the guise is inherently weak such as where the guise has a significant ornamental or utilitarian function. See Calumet Manufacturing v. Mennen (1989), 27 C.P.R. (3d) 467 at 472 and Parke Davis v. Empire Laboratories (1963), 41 C.P.R. 121 at 145.

What evidence will be sufficient to establish acquired distinctiveness will depend very much on the circumstances of each case. It will not normally be sufficient to merely provide evidence of sales and advertising of the goods in Canada. For a distinguishing guise which has a high degree of inherent distinctiveness, it could be sufficient to provide evidence of very significant sales and advertising (which should include specimens of how the guise has been actually used and advertised) together with evidence that no other trader is using the same or a similar mark in Canada. For a distinguishing guise which is inherently weak (e.g. if it has a significant ornamental or utilitarian function), it will normally be necessary to provide more direct evidence that purchasers in the marketplace have come to recognize the guise as distinguishing the goods or services of its owner from those of others; for this purpose survey evidence or affidavits from actual purchasers may be necessary. In order to establish acquired distinctiveness, the evidence submitted need not show that 100% of potential purchasers recognize the guise as serving to distinguish; however, in general the evidence would have to be sufficient for it to be concluded that a high proportion of potential purchasers recognize the guise as serving to distinguish.

Subsection 32(2) of the Trade-marks Act requires the Registrar, having regard to the evidence adduced, to restrict the registration to the defined territorial area in Canada in which the distinguishing guise is shown to have become distinctive. Accordingly, evidence submitted to establish acquired distinctiveness must make clear in what territorial areas in Canada the distinguishing guise has become distinctive.

IV.3.8 Functionality

Where an application is filed for the registration of a three-dimensional mark, whether as a distinguishing guise or as an ordinary trademark, the Office will assess whether the mark is primarily functional from either an ornamental or a utilitarian point of view. If it is, and if such functionality relates primarily or essentially to the goods or services covered by the application, the mark will not be registrable. See Remington Rand v. Philips (1995), 64 C.P.R. (3d) 467.

The Office will also take into account paragraph 13(1)(b) of the Trade-mark Act which provides that a distinguishing guise is registrable only if the exclusive use by the applicant of the distinguishing guise in association with the goods or services with which it has been used is not likely unreasonably to limit the development of any art or industry. See Kirkbi AG et al. v. Ritvik Holdings Inc.; Attorney General of Canada et al., Interveners (2005), 43 C.P.R. (4th) 385.

IV.3.9 Perspectives

In cases whereby more than one drawing of the trademark has been provided, in order to comply with Rule 24 of the Trade-marks Regulations, the application should contain a statement clarifying that the drawing depicts "x" perspectives of the same trademark.

IV.4 Trademark Consisting of a Sound

(See also the practice notice entitled Trademark consisting of a sound)

The application for the registration of a trademark consisting of a sound should:

  1. state that the application is for the registration of a sound mark;
  2. contain a drawing that graphically represents the sound;
  3. contain a description of the sound; and
  4. contain an electronic recording of the sound.

Where it is not clear whether an application is intended to cover a sound mark, the Office will ask the applicant for written clarification.

Where a sound mark is considered to be functional and/or clearly descriptive or deceptively misdescriptive, an objection will be raised pursuant to the provisions of paragraph 12(1)(b) of the Trade-marks Act. In such cases, the mark may be registered pursuant to the provisions of subsection 12(2) or section 14 of the Trade-marks Act.

IV.4.1 Electronic Recording of Sound

New applications for sound marks may only be submitted by way of a paper application, and not through CIPO's online filing system.

The Office can only accept a recording of the sound in MP3 or WAVE format, limited to five megabytes in size, and recorded on a CD or DVD. Other types of recording media and references to a hyperlink or a streaming location cannot be accepted.

Electronic recordings should not contain any looping or repetition of the sound.

The electronic recording of sound should only be submitted at the time of filing, and need not be re-submitted with a revised application.

IV.5 Paragraph 12(1)(a) — Names and Surnames

(See also the practice notice entitled Name or Surname – Paragraph 12(1)(a) of the Trade-marks Act)

Paragraph 12(1)(a) of the Trade-marks Act stipulates 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 by their names or surnames, providing the name or surname was used honestly and not with the intent of passing off the goods as those of another person with the same or a similar name.

When confronted with a mark composed of a word or words that have a name or surname connotation, research must be conducted to determine whether it is in fact the name or surname of an individual. See Gerhard Horn Investments Ltd. v. Registrar of Trade Marks (1983), 73 C.P.R. (2d) 23. If the Examiner finds an individual with that name or surname, the test to determine primary meaning must be applied. At this second step of the test, examiners must determine what, in their opinion, 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 the name or the surname of an individual who is living or who has died within the preceding thirty years, rather than something else, an objection under paragraph 12(1)(a) will be raised.

Examiners will also raise an objection pursuant to paragraph 12(1)(a) where the surname has been pluralized or is in the possessive form.

IV.5.1 Definition of "Word"

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

In Standard Oil Co. v. Registrar of Trade Marks (1968), 55 C.P.R. 49 at page 58, Jackett P. stated:

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.

IV.5.2 Definition of Name or Surname

The Trademarks Office considers a surname to be the name borne in common by 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.

A trademark comprised of a form of address such as Sir, Madam, Miss, Ms., M., Mme., etc., in combination with a given name or surname, is not normally considered to be primarily merely a name or surname. However, in Baroness Spencer-Churchill v. Cohen (1968), 55 C.P.R. 276, the Registrar found the trademark SIR WINSTON to constitute a combination of words by which the late Sir Winston Leonard Churchill was regularly known and designated, and was therefore primarily merely the name of an individual who had died within the preceding thirty years.

IV.5.3 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 the review of the research results shows that the word is a name or surname but that it also has another significance, a second inquiry must be commenced.

The other significance may be that the word is a created word (FIOR), that the word has another meaning (COLES) and (ELDER'S), that the word is the name of a community, city, town, capital, river, stream or castle, or that it is a given name.

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.

IV.5.4 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 (chief, principal, first importance) meaning of the word.

IV.5.5 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 word.

Examiners must then balance the name or surname significance of the word and the other significance of the word. 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 raised. If the examiner believes that the name or surname significance of the word does not predominate, no objection should be raised. In the event that the surname significance and any other significance of the word are equal, then no objection should be raised.

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 mark 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, supra, 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 mark 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 trademark significance, dictionary meaning, geographical significance, and so on, then the "primary" meaning of the word or words must be decided. Is it primarily a name or a surname, or is it primarily a trademark, geographical location, and so on?

In Juneau v. Chutes Corp. (1986), 11 C.P.R. (3d) 260 (T.M.O.B.), the mark 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.

IV.5.6 Given Name and Surname

A mark 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.

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

Trademark

Found

Action

John Wilson

John Wilson

12(1)(a)

John Wilson

J. Wilson

no objection

J. Wilson

John Wilson, Jack Wilson, etc.

12(1)(a)

J. Wilson

J. Wilson

12(1)(a)

In Gerhard Horn Investments Ltd. v. Registrar of Trade Marks (1983), 73 C.P.R. (2d) 23, Cattanach J., in allowing registration of the mark 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.

IV.5.7 Surnames with "& Sons", "Brothers", "Inc.", "Co.", etc.

Words consisting of a surname followed by "& Sons", "Brothers", "Inc.", "Co.", etc. are not, as a whole, objectionable under paragraph 12(1)(a) of the Act. The additional matter such as "& Sons" takes away the "primarily merely" element.

IV.5.8 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 Trade-marks Act unless the exact combination can be found .

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 registrable as the trademark as a whole cannot be said to be primarily merely a surname, in view of Cattanach J. in Gerhard Horn Investments Ltd. v. Registrar of Trade Marks (1983), 73 C.P.R. (2d) 23.

IV.5.9 Pluralized Surnames

A trademark consisting of a name or surname in the pluralized form may or may not be registrable. An objection under paragraph 12(1)(a) may be raised if the singular or plural form of the surname is found. However, the test to determine primary meaning must still be applied i.e. examiners must determine what in their opinion 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 respond to the word by thinking of it as the surname of an individual, then an objection under paragraph 12(1)(a) will be raised.

IV.5.10 Surnames in the Possessive Form

A trademark consisting of a name or surname in the possessive form may or may not be registrable. The test to determine primary meaning must be applied i.e. examiners must determine what in their opinion would be the response of the general public in Canada to the trademark. 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 the surname of an individual, then an objection under paragraph 12(1)(a) will be raised.

IV.5.11 Surnames That Include Accents or Other Characters

A surname may contain accents, umlauts and other similar characters. When conducting research, any query made that includes the aforementioned characters may provide results that do not have these characters shown. However, examiners should still raise an objection pursuant to paragraph 12(1)(a) of the Trade-marks Act when the trademark includes these characters, even though the names or surnames found in the search do not show them.

Trademark

Found

Action

Müller

Muller

12(1)(a) objection

Noël

Noel

12(1)(a) objection

Côté

Cote

12(1)(a) objection

The objection could be raised in the following way:

"The search results from a Canadian phone directory of “MÜLLER” reveal over 300 instances of the surname."

IV.5.12 Reference Sources — Paragraph 12(1)(a)

In order to raise an objection under paragraph 12(1)(a), Examiners must find at least one instance of a name or surname of an individual who is living or has died within the preceding 30 years. Examiners will use a wide variety of print and internet resources with which to find the name or surname of an individual: these resources need not be limited to phone directories or to Canadian sources. Examiners will include a summary of their research in their report, indicating where the name or surname was found.

However, when determining the likely response of the average Canadian to a trademark, Examiners must use sources that are available to the general public in Canada. The most commonly consulted source for determining the primary meaning of a word are Canadian phone directories. In this respect, a relatively high number of listings in a Canadian directory may provide an indication that the average Canadian consumer would respond to the trademark as primarily merely a name or surname. Other resources include websites and social media apps originating in Canadian or those outside Canada that have an international viewership or membership which include Canadians. Articles found in major newspapers and magazines with substantial Canadian circulation, membership or readership (either paper- or online-based) will also be considered.

IV.5.13 Historical Significance

A trademark may have name or surname significance and, at the same time, call to mind an individual bearing the same name in the field of literature, art, music, history, politics, commerce, science or the like. If the examiner is of the opinion that the hypothetical Canadian would respond to the trademark as the name or surname of an individual who has died more than thirty years ago, the trademark is registrable. For example, for the hypothetical Canadian, the primary significance of the name Sir John A. MacDonald would be historical. The surname MacDonald alone, however, would elicit a completely different response and therefore be objectionable under paragraph 12(1)(a).

IV.5.14 Embellishments

An objection under paragraph 12(1)(a) may be raised despite the trademark including embellishments to lettering. In Davidoff Commercio E Industria Ltda v. Davidoff Extension S.A. (1989), 24 C.P.R. (3d) 230, the Chairman of the Opposition Board, G.W. Partington, had the following to say at page 234 of the decision:

In my view, the embellishments to the lettering of the applicant's trade-mark DAVIDOFF Design, namely, the underline extending the length of the trade-mark and the dot within the capital letter "D" would be perceived by the average consumer of the applicant's wares to be an integral part of the stylized lettering of the word "Davidoff" and could not be dissociated from the word itself: see Canadian Jewish Review Ltd. v. Registrar of Trade Marks (1961), 37 C.P.R. 89, 22 Fox Pat. C.49. As well, I would note that the dot in the "D" which forms an additional element of the applicant's trade-mark does not appear in any of the specimens or evidence adduced by the applicant. As such, there is no additional design matter in the applicant's trade-mark to constitute a registrable mark, within the scope of the decision in John Labatt Ltd. v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 110.

IV.6 Paragraph 12(1)(b) — Clearly Descriptive or Deceptively Misdescriptive

IV.6.1 Definition

Trademarks which are in part or in whole composed of words must also be examined for any clearly descriptive or deceptively misdescriptive meanings, in English or French, as applied to the character or quality, place of origin, conditions of, or persons employed in the production of the associated goods or the performance of the services. The purpose of a paragraph 12(1)(b) objection to registrability of clearly descriptive words is that no one person should be able to appropriate such a word and place legitimate competition at an undue disadvantage in relation to language that is common to all. See General Motors Corp. v. Bellows (1949), 10 C.P.R. 101, at 112-113.

The word "clearly" is not used in the sense of "accurately", but of "easy to understand...evident, plain.". See Thorold Concrete Products Ltd. v. Registrar of Trade Marks (1961), 37 C.P.R. 166 at 172.

The purpose of denying registration to deceptively misdescriptive marks is to prevent the public from being misled with respect to the goods or services and to prevent the person making such misrepresentations from obtaining an unfair advantage over competitors. The word "deceptive" is key. A misdescriptive word is registrable, but a deceptively misdescriptive word is not. See also sections IV.5.5 and IV.5.6 of this Manual.

IV.6.2 Examination under Paragraph 12(1)(b)

Trademarks which, as a matter of first impression, appear to be unregistrable because of a descriptive significance require very thoughtful analysis. The examiner must establish the case. To do so will require research into the meanings of words and into the characteristics and properties of the broad spectrum of goods or services available to today's consumer. When faced with a design or composite mark, the examiner must also study the impression created by the non-word portion of the mark as it stands alone and the impression created in conjunction with that portion of the mark which is composed of reading matter.

If a paragraph 12(1)(b) objection is made, the examiner must explain the reasons for it fully when reporting to the applicant. It is not enough to quote dictionary meanings of a word and leave it to the applicant to determine how the mark is clearly descriptive or deceptively misdescriptive in association with the goods or services as described in the application. Similar care must be exercised when requesting a disclaimer in respect of a portion of a trademark considered objectionable under paragraph 12(1)(b).

It is important to keep in mind that the context within which a paragraph 12(1)(b) determination is made encompasses the meaning conveyed by the trademark and its relationship to the goods or services to which it is applied. See the KOLD ONE decision, Provenzano v. Registrar of Trade Marks (1977), 37 C.P.R. (2d) 189 and affirmed (1978), 40 C.P.R. (2d) 288 (F.C.A).

The question to be asked is: What, as a matter of first impression, does the trademark tell the potential dealer in, or purchaser of, the goods or services? What does the mark lead such people to believe about the quality, character, or conditions of production, etc.? Does the mark tell them what the goods or services are, or describe them or describe a property which is commonly associated with them? If so, the mark should remain at the disposal of any other parties engaged in the production and distribution of similar goods or the performance of like services. Thus, a trademark affixed to a carton of ice-cream which reads "frozen dessert" would be considered to be unregistrable for the same reasons.

If, on the other hand, the mark deceptively misdescribes a property of the goods or services, then the examiner must also consider raising an objection to registration under paragraph 12(1)(b). The essence of unregistrability in this case is that the dealers in, or purchasers of, the goods would be deceived by the misdescription into purchasing goods or ordering services which differed in character or quality from those expected.

IV.6.3 Test for Clear Descriptiveness

In deciding whether a mark is clearly descriptive or deceptively misdescriptive in the English or French languages, the word must be considered as to the immediate impression created. The word is not to be assessed according to its etymological meaning. In Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25, Collier J. stated at page 27: "The decision that a mark is clearly descriptive is one of immediate impression; it must not be based on research into the meaning of words."

It follows that examiners must not rely on any obsolete, archaic or unusual significance of a word or words in relation to the goods or services. The meaning of the word in common parlance, not the etymological meaning, is the determining factor in finding if a word is clearly descriptive or deceptively misdescriptive of the goods or services. Authoritative sources, including dictionaries, may be used for this purpose. See John Labatt Ltd. v. Carling Breweries Ltd. (1974), 18 C.P.R. (2d) 15.

However, the fact that a particular combination of words does not appear in any dictionary does not prevent a trademark from being found to be clearly descriptive or deceptively misdescriptive. If each portion of a mark has a well-known meaning in English or French, it may be that the resultant combination would be contrary to paragraph 12(1)(b) of the Trade-marks Act. In Oshawa Group Ltd. v. Registrar of Trade Marks (1980), 46 C.P.R. (2d) 145, Cattanach J. stated at pages 148-149:

With respect to trade marks such as HYPER-VALUE and HYPER-FORMIDABLE which are coined in the sense that the well-known French and English prefix "hyper" is combined with the well-known English word "value" and the word "formidable" which is a well-known word in both the French and English languages, the resultant combinations do not appear in any dictionary but because those combinations do not appear it cannot be said that they are devoid of meaning. The components of the coined marks do have dictionary status and for that reason I do not think that resort might not be had to dictionaries for instruction as to the meaning of the components and, if possible, to ascertain there from the meanings of the resultant words. This is particularly so when the initial word is a prefix, as "hyper" is, used with prepositional force or as an adverb or adjective.

And further at page 152:

In ascertaining the impression that the trade marks HYPER-FORMIDABLE and HYPER-VALUE convey to determine if such marks are clearly descriptive it is the impression of the probable user of the appellant's services which is to be ascertained.

Further, in Mitel Corporation v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202, Dubé J determined that the trademark SUPERSET was contrary to paragraph 12(1)(b) when used in association with subscribers' telephone instruments. Dubé J. stated the following at page 206:

Undoubtedly, the decision whether a trade mark is clearly descriptive is one of first impression....The Court must place itself in the shoes of the ordinary consumer who sees the trade mark advertised in store windows, or reads it in newspaper advertisements, or hears it over the radio or the television. The use of a dictionary may be useful, but a coined mark which has not acquired dictionary status still remains within the ambit of paragraph 12(1)(b)....In such instances the Court may look at the component parts of the trade mark in order to assess what the mark as a whole looks, or sounds like. Words or prefixes having a laudatory connotation are prima facie descriptive terms, although in certain associations such epithets may have lost their descriptive impact.

at page 208, Dubé J. also set out the next important principle: "...the mark is not to be considered in isolation; it must be perceived in connection with the wares to which it is associated."

The second element of the test is for examiners to decide what first impression the word would create upon the ordinary everyday dealer in or purchaser or user of the goods or services. In Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25, Collier J. considered the registrability of the mark SUPERWASH and applied the test as follows at page 27:

The Court, in considering whether the impugned expression is clearly descriptive, must endeavour to put itself in the position of the everyday user of the wares. It seems to me the ordinary user or dealer in sweaters and men's hosiery, fabricated from wool, would know that wool has, traditionally, been susceptible to shrinkage when the garment is washed. In my opinion, that notional person, as a matter of immediate impression, would conclude that "superwash" applied to particular woolen goods, described a garment that washed very, or extremely well, with little or no resultant shrinkage.

In the event that examiners are in doubt as to whether a dealer or consumer would, as a matter of first impression, conclude that the trademark was clearly descriptive of the character or quality of the goods or services, then an objection under paragraph 12(1)(b) should not be raised.

A different approach was taken with respect to new words or new variations in meanings of older words found in the French or English languages in Home Juice Co. v. Orange Maison Ltée. (1970), 1 C.P.R. (2d) 14. Although the word or variation on the word may have developed in some other French or English country and be in use in that country, and although the word may not be known to the ordinary dealer in or user of the goods in Canada, that word must be considered as a part of the common parlance for the purpose of applying paragraph 12(1)(b). In Home Juice Co., Mr. Justice Pigeon stated the following at page 16 of the decision:

Respondent has contended that the current meaning in France is not to be considered, that regard must be had only to the meaning current in Canada and that, in the absence of any evidence, whether by dictionaries or otherwise, that the meaning in question was current in Canada at the date of registration, no account should be taken of a recent meaning found in France only. This contention would have serious consequences if it was accepted. One result would be that a shrewd trader could monopolize a new French expression by registering it as a trade mark as soon as it started being used in France or in another French-speaking country and before it could be shown to have begun being used in Canada.

In my opinion, the wording of s. 12 does not authorize such a distinction. It refers to a description `in the English or French languages'. Each of these two languages is international. When they are spoken of in common parlance they are considered in their entirety and not as including only the vocabulary in current use in this country, a vocabulary that is extremely difficult to define especially in these days when communication media are no longer confined within national boundaries.

When considering descriptiveness, due regard must be given as to whether the mark is grammatically correct. In Clarkson Gordon v. Registrar of Trade Marks (1985), 5 C.P.R. (3d) 252, the marks AUDITCOMPUTER and THE AUDITCOMPUTER were found not to be clearly descriptive since the word AUDITCOMPUTER was an awkward and cumbersome combination of two words. In Pizza Pizza Ltd. v. Registrar of Trade Marks (1982), 67 C.P.R. (2d) 202, the mark PIZZA PIZZA was found not to be clearly descriptive since the expression PIZZA PIZZA was not a linguistic construction that is a part of normally acceptable spoken or written English.

IV.6.4 Depicted, Written or Sounded

When applying the test of registrability under paragraph 12(1)(b), examiners must be prepared to consider the objection to descriptiveness or deceptive misdescriptiveness as it applies to any type of mark, whether a word, design or composite mar k, since a depiction or a design may be objectionable, as well as a word when seen or sounded.

In Frost Steel and Wire Co. Ltd. v. Lundy (1925), 57 O.L.R. 494, the Court was considering the validity of a trademark which consisted of the picture of a knot used in a wire fence. In holding the registration invalid, Rose J. stated at page 498:

There are, however, very few reported cases in which the Courts have had to consider the question whether a design mark that is merely descriptive is capable of registration. But it is difficult to see why there should be any difference between the rules to be applied in the case of a design and those applied in the case of a word....

The hearing officer in Ralston Purina Co. v. Effem Foods Ltd. (1990), 31 C.P.R. (3d) 52, (a cat's head design for pet food, namely food for cats) stated at page 55:

The test to be applied respecting s. 12(1)(b) of the Act is the immediate impression the mark used in association with the wares creates on an everyday user of those wares. In the present case, I consider that the use of the applicant's mark on a can or package of cat food would clearly indicate that the character of the wares are such that they are intended for cats.

The mark THOR-O-MIX, for use in association with ready-made concrete, was refused by the Registrar as being clearly descriptive of the character of the goods. In Thorold Concrete Products Ltd. v. Registrar of Trade Marks (1961), 37 C.P.R. 166, Kearney, J. stated at page 172:

When I first sounded the instant trade name, it plainly had the same significance for me as if it were written "thorough-mix", and I think that in like circumstances the general public would be similarly impressed.

IV.6.5 Misdescriptiveness

While paragraph 12(1)(b) prohibits the registration of marks which are deceptively misdescriptive, there is no bar to registration of misdescriptive marks if they are not likely to lead the average purchaser to believe erroneously that the products or services with which they are associated possess some characteristic or quality. Interestingly enough, in his Canadian Law of Trade Marks and Unfair Competition, Third Edition, H.G. Fox argues for the registrability of clearly misdescriptive words at pages 93-94:

Many words may be clearly misdescriptive of the wares or services in association with which they are used but are by no means deceptively misdescriptive. In a sense a clearly misdescriptive word may be quite distinctive. Its very misdescriptiveness attracts the senses and thus makes for distinctiveness. In such a case a word of that type ought to constitute a good trade mark and ought to be registrable. If, on the other hand, a mark is deceptively misdescriptive, the reverse is the case. Thus, the mark "North Pole" might well be descriptive of the character or quality of the wares if used in association with ice cream or frozen foods, just as the word "Frigidaire" has been held to be descriptive of refrigerators and refrigerating systems. But while the use of the words "North Pole" would be misdescriptive of bananas or oranges it would not be deceptively misdescriptive. It would be the use of a geographical name dislocated or disconnected from the origin of the goods.

IV.6.6 Deceptively Misdescriptive

The principle which underlies a paragraph 12(1)(b) objection as it concerns deceptive misdescriptiveness is that a mark which is the subject matter of an application must not mislead the public by ascribing a quality to goods that they do not possess. For example, in Deputy Attorney-General of Canada v. Biggs Laboratories (Canada) Limited (1964), 42 C.P.R. 129, the trademark SHAMMI, as applied for in relation to a transparent polyethylene glove, was denied registration. The glove did not contain one scintilla of chamois or shammy. In finding the mark SHAMMI deceptively misdescriptive of the character or quality of the goods, Dumoulin J. stated at page 130:

An article advertised for sale as containing certain components which, in truth, it does not have, surely must be considered as deceptively misleading to the purchasing public.

However, in Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103, Dubé J. held that the word PREMIER was not deceptively misdescriptive as applied to the goods "sand and gravel and ready-mixed concrete" and "concrete blocks and bricks ordinarily used in the construction of buildings and homes". Dubé J. found that the word PREMIER denotes a degree of quality that might be attained by the goods and, insofar as the goods did not meet that quality, the word PREMIER would be misdescriptive of the quality of the goods. However, ordinary dealers in or purchasers of the goods would perceive PREMIER, as applied for, as an indirect reference to the quality of the goods and would not be led to believe that the goods being purchased were of the best quality. The word PREMIER was held not to be deceptively misdescriptive, but it was found to be clearly descriptive and therefore had to be disclaimed.

IV.6.7 In the English or French Languages

A word in a language other than English or French which is clearly descriptive of the character or quality of the goods or services is not prohibited by paragraph 12(1)(b), the prohibition being limited to words in the English or French languages. In Gula v. Manischewitz Co. (1947), 8 C.P.R. 103, it was held that even though the word "tam" meant "taste" or "tasty" to a Hebrew- or Yiddish-speaking person, the mark TAM TAM was a good subject of a trademark being neither in the English nor the French languages.

Paragraph 12(1)(b) also does not preclude the registration of a trademark comprised of a combination of French and English words individually descriptive of the goods. In Coca-Cola Co. v. Cliffstar Corp. (1993), 49 C.P.R. (3d) 358, the applicant applied to register the trademark LE JUICE for juices. The word "juice" was disclaimed. The opponents alleged the mark was the name of the goods and unregistrable pursuant to paragraph 12(1)(c) of the Trade-marks Act and that the mark was clearly descriptive or deceptively misdescriptive of the character or quality of the goods, contrary to paragraph 12(1)(b). The opposition was rejected and the following was stated at page 360:

The opponents' own evidence establishes that the word "le" is a French language definite article and "juice" is an English language word referring to fluid naturally contained in plant or animal tissue. Thus, the trade mark as a whole cannot be said to be the name of anything in the English language nor can it be said to be the name of anything in the French language.

And further at page 361:

The applicant's proposed mark is comprised of the French word "le" and the ordinary English word "juice". The former word is a definite article in the French language. The latter word is clearly descriptive in the English language of the character of the wares "fruit juices" and the applicant has conceded this by including a disclaimer in its application. The combination of the two words, however, does not offend the provisions of s. 12(1)(b) of the Act…

IV.6.8 Character or Quality

A trademark is not registrable if it is clearly descriptive or deceptively misdescriptive in the English or French languages of the character or quality of the goods or services in association with which it is used or proposed to be used. As to what constitutes the character of the goods or services, the examiner may be guided by the words of Cattanach J. in Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 C.P.R. 29 at page 34, where he states that "...the word ‘character' as used in s. 12(1)(b) must mean a feature, trait or characteristic of the product."

Words descriptive of the function or result of using goods have also been refused. The marks STA-ZON, a distortion of "stays on", and SHUR-ON, a distortion of "sure on", as applied to eyeglass frames, were held not to be proper trademarks. In Kirstein Sons & Co. v. Cohen Bros., Limited (1907), 39 S.C.R. 286 at page 288, Mr. Justice Davies stated: "He could not pre-empt nor claim the exclusive use of the idea descriptive of some merit in the article."

In the ULTRA FRESH decision, Thomson Research Associates Ltd. v. Registrar of Trade Marks (1982), 67 C.P.R. (2d) 205, the function of the goods was held to be clearly descriptive of their character. Mahoney J. stated at page 208:

I agree with the respondent that "ultra fresh" is clearly descriptive. It is not descriptive of the bacteriostats and fungistats themselves but it does clearly describe, or deceptively misdescribe, the condition of the products, e.g., the underwear, after treatment with those bacteriostats and fungistats.

On appeal, (1983), 71 C.P.R. (2d) 287, Thurlow, C.J. stated at page 288:

In our view, ULTRA FRESH is clearly descriptive of the function, the purpose and the effect when used as intended, of the bacteriostats and fungistats in association with which it is used as a trade mark. It follows that its registration was properly refused as being contrary to para. 12(1)(b) of the Trade marks Act, R.S.C. 1970, c. T-10.

Words which are common to a particular trade, such as "fashions" or "pack", and which express a special or distinguishing attribute of goods or services, are seen as clearly descriptive of the character of the goods and are not registrable. Concerning the meaning of the word "quality" as it applies in paragraph 12(1)(b), examiners will find objectionable those words which describe a degree of excellence reputed to be achieved by the goods or services, e.g., SUPERWASH as applied to the yarn or fabric in sweaters or hosiery, or NO. 1 in association with brewed alcoholic beverages.

Marks such as SUPERIOR, EXCELLENT, QUALITY, BEST, ULTRA, SUPER, SUPREME or PERFECT, which laud the merits or superiority of the goods or services, are clearly descriptive of their quality and are not registrable.

The SUPERSET decision, Mitel Corporation v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202, reflects the same line of thinking on laudatory words, since the mark involved was found to be clearly descriptive.

IV.6.9 Embellishment of Descriptive Words

Some marks are applied for in fanciful lettering. These marks are not registrable since they do not have any design features exclusive of the words which form the mark. In John Labatt Ltd. v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 110, Cattanach J. had the following to say on this matter at page 120:

In this case, as in the CANADIAN JEWISH REVIEW case, the words "super bock" form the material part of the trade mark and in spite of the added embellishments to some of the letters of the word "bock" and the sequence of the letters of the word "super" positioned above the word "bock" where the meaning of the combination dictates it must be positioned on a gentle curve still spell out "super bock".

As Cameron J. has said, "without the words there would be no special features or design".

Since the two words "super bock" form a most material part of the trade mark, despite the disclaimer of those two words, and there is no design feature exclusive of the letters and their positioning it follows from the reasoning of Cameron J. which I adopt and apply, the trade mark as a whole cannot be other than clearly descriptive of the character or quality of the wares with which they are associated and so not registrable.

Note: This principle would also apply where the mark is unregistrable pursuant to paragraph 12(1)(a) or (c).

IV.6.9.1 "When Sounded" Test Applied to Composite Marks

(See also the practice notice entitled Paragraph 12(1)(b): "Sounded" Test Applied to Composite Marks Which Include Words That Are the Dominant Feature of the Mark)

Paragraph 12(1)(b) of the Trade-marks Act stipulates that a trademark is registrable if it is not whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin.

In Best Canadian Motor Inns Ltd. v. Best Western International, Inc. (2004), 30 C.P.R. (4th) 481, (hereinafter referred to as "Best Canadian Motor Inns Ltd.") the Federal Court ruled on the interpretation of paragraph 12(1)(b) of the Trade-marks Act in relation to composite marks (i.e. marks that contain both word and design elements).

Specifically, in Best Canadian Motor Inns Ltd., the Federal Court concluded that the words "BEST CANADIAN MOTOR INNS" were the dominant feature of the mark shown below and, given that these words were clearly descriptive of the character or quality of the applicant's services, the mark in its entirety, when sounded, was found unregistrable pursuant to paragraph 12(1)(b) of the Trade-marks Act:

Best Canadian Motor Inns Ltd Logo

In light of this decision, the Trademarks Office considers that a composite mark, when sounded, is not registrable pursuant to paragraph 12(1)(b) of the Trade-marks Act if it contains word elements that are:

  1. clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; and also
  2. the dominant feature of the mark.
IV.6.9.1.1 Determination of Whether Words are the Dominant Feature of a Composite Mark

The Canadian Oxford Dictionary defines the word "dominant" as

"1. dominating, prevailing, most influential. 2. (of a high place) prominent, overlooking others. (...)." It defines the word "dominate" as "(...) 2. tr. & intr. (of a person, sound, event, etc.) be the most influential or conspicuous factor in (...)."

Le Petit Robert defines the word "dominant" as

"1. Qui exerce l'autorité, domine sur d'autres (...) 2. Qui est le plus important, l'emporte parmi d'autres (capital, premier, prépondérant, primordial, principal) (...)." It defines the word "dominer" as: "2. Exercer une influence qui l'emporte sur les autres (...) 2. Être le plus apparent, le plus fort, le plus important, parmi plusieurs éléments (l'emporter, prédominer) (...)."

In determining whether a word element is the dominant feature of a mark, examiners will consider whether a prospective consumer would, as a matter of first impression, perceive the word element as being the most influential or prominent feature of the mark. In doing so, examiners will look at the mark in its totality, and compare the visual impression created by the word element of the mark to the visual impression created by the design element of the mark. Where the design element of the mark does not stimulate visual interest, the word element will be deemed dominant.

Factors that may be considered by examiners in assessing the visual impression created by the elements of a mark include the size of the words and the size of the design, the font, style, color and layout of the lettering of the words, as well as the inherent distinctiveness of the design element.

The Office considers that composite marks which include design elements added to clearly descriptive words, are not registrable if the design elements are mere embellishments of the letters comprising the words and cannot be dissociated from the words themselves. See Canadian Jewish Review Ltd. v. Registrar of Trade Marks (1961), 37 C.P.R. 89; Ingle v. Registrar of Trade Marks (1973), 12 C.P.R. (2d) 75 and John Labatt Ltd. v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 110.

Based on the definitions above, the Office takes the position that only one element in a trademark can be dominant. Therefore, in situations where the word element and the design element are considered to be equally influential or prominent in a trademark, the Office considers that neither can be the dominant feature of the mark.

When the word element of a composite mark is not the dominant feature of the mark, the Registrar considers that the mark in its totality cannot, when sounded, be clearly descriptive or deceptively misdescriptive and contrary to paragraph 12(1)(b) of the Trade-marks Act. Where the Registrar has doubt concerning whether the word element is the dominant feature of the mark, the Registrar cannot be satisfied that the mark, when sounded, is unregistrable under paragraph 12(1)(b) of the Trade-marks Act.

IV.6.10 Suggestive Trademarks

A trademark that does not clearly describe the character or quality of the goods is sometimes referred to as a suggestive trademark. The trademark WATERWOOL was held registrable in relation to a list of wearing apparel for men and ladies in Deputy Attorney-General of Canada v. Jantzen of Canada Limited (1964), 46 C.P.R. 66 at page 72. President Jackett reviewed the evidence and concluded as follows:

My first impression, and my present impression, is that WATERWOOL may mystify the person who is confronted with it in association with a garment; it may even vaguely suggest some association with wool; but it does not describe the garment as being made of the wool of any animal.

The GRO-PUP case is often cited with respect to a mark found to be suggestive rather than descriptive. This case is reported as Kellogg Co. of Canada Ltd. v. Registrar of Trade Marks [1940] Ex. C.R. 163. After reviewing the evidence, Angers J. stated at page 170:

...I do not think that the word "Gro-Pup" is descriptive of the article to which it is to be applied, namely, dog food; it is at the utmost suggestive of the result which it is liable to produce.

However, in Quaker Oats Co. of Canada Ltd. v. Ralston Purina Canada Inc. (1987), 18 C.P.R. (3d) 114, the trademark HELPING DOGS LIVE LONGER LIVES was refused for being clearly descriptive and not registrable. At page 119 of the decision, the Chairman of the Opposition Board, G.W. Partington, had the following to say in finding the mark clearly descriptive of the result.

...I am of the view that the average purchaser of dog food would immediately conclude that the trade mark HELPING DOGS LIVE LONGER LIVES as applied to such wares would clearly describe to the purchaser that the use of the applicant's wares would result in their pet living a longer and healthier life. As such, the present situation is clearly distinguishable from that considered by Mr. Justice Angers in Kellogg Co. of Canada Ltd. v. Registrar of Trade Marks, [1939] 3 D.L.R. 65, [1940] Ex. C.R. 163, where the learned trial judge concluded that the trade mark GRO-PUP as applied to dog food was "at the utmost suggestive of the result which it is liable to produce". Further, I do not consider that the GRO-PUP decision can any longer be considered as authority for the proposition that the result that an article of commerce is liable to produce is not such as to render a description of that result unregistrable as a trade mark for that article: see Sharp Kabushiki Kaisha v. Dahlberg Electronics, Inc. (1983), 80 C.P.R. (2d) 47 at pages 51-5.

IV.6.11 Conditions of Production

If the mark applied for is clearly descriptive or deceptively misdescriptive of the conditions of production, an action objecting to registration should be issued to the applicant. In Staffordshire Potteries Ltd. v. Registrar of Trade Marks (1976), 26 C.P.R. (2d) 134, the Court refused the application for registration of the mark KILNCRAFT on the grounds that the first impression of a person seeing the mark would be that the goods (tableware) were produced by a kiln process. It followed that if the goods were not produced in this way, the mark would be deceptively misdescriptive.

IV.6.12 Persons Employed in the Production

A word clearly descriptive or deceptively misdescriptive of the persons employed in the production of the goods or performance of the services is not registrable. The word "potter" would not be registrable for pottery, nor would the word "baker" be registrable for bread.

IV.6.12.1 Professional Designation

(See also the practice notice entitled Professional Designations and their initials – Paragraph 12(1)(b) of the Trade-marks Act)

When confronted with a mark or portion of a mark that appears to be the title of a profession, research is conducted to determine whether the mark or portion of the mark is a professional designation. Where research discloses that the mark or portion of the mark applied for does consist of a professional designation, examiners are to apply the first impression test in light of the applicant's goods and/or services. See Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25 and Mitel Corp. v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202.

If it is considered that the prospective consumer, when faced with the applied for trademark would immediately, as a matter of first impression, conclude that the goods or services are produced by a professional from that designation, the mark will be found to be clearly descriptive or deceptively misdescriptive of the persons employed in the production of the goods and services and unregistrable pursuant to the provisions of paragraph 12(1)(b) of the Trade-marks Act. See Life Underwriters Assn. of Canada v. Provincial Assn. of Québec Life Underwriters (1988), 22 C.P.R. (3d) 1 and Lubrication Engineers, Inc. v. Canadian Council of Professional Engineers (1992), 41 C.P.R. (3d) 243.

Moreover, the Office considers that the mere addition of an abbreviation, acronym or initials of the professional designation contained in the trademark will not render the trademark registrable. See Life Underwriters Assn., supra; College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada (2009), 80 C.P.R. (4th) 265.

IV.6.13 Place of Origin

(See