Archived — Trademark Agent Exam 2011 - Part A

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Questions and answers — (150 Marks)

Question 1 (12 marks)

On behalf of your client, Canadian Fitness Inc., you filed an application for the trademark DR. FITNESS on July 5, 2011 on the basis of proposed use in Canada in association with "fitness classes".

You have now received an Office Action dated September 23, 2011 in which the Examiner objects to the registration of this mark in view of paragraph 12(1)(d) of the Trade-marks Act. The Examiner considers the mark to be confusing with the trademark DR. FEEL GOOD registered in association with "operation of a fitness center" and owned by Feel Good Incorporated. The examiner also considers that your client is not entitled to registration in view of pending application DR. FIT filed by CDN Fitness Inc. on June 14, 2011 in association with "fitness classes". Lastly, the examiner also objects to the statement of services and requires an amended application in which the services are described in specific ordinary commercial terms. The examiner requests that the type of fitness class be specified: zumba; step; spinning; circuit training etc.

Draft a letter, in point form, to Canadian Fitness Inc. In your letter, provide relevant information to your client, your comments on the Office Action, your suggestions for responding to the objections, and request any necessary information needed to respond. Cite the relevant provisions of the Trade-marks Act or its regulations to support your answer.

Answer

Advise of time limit to file a response (6 months to respond) (1 mark); Advise that the 12(1)(d) objection may be overcome by arguing that the marks are not sufficiently similar in appearance, sound and idea suggested to cause likelihood of confusion (1 mark); the mere fact that both marks begin with DR. is not sufficient to create confusion (1 mark); suggest conducting state of the register research for other similar marks. (1 mark);

Request confirmation from the applicant that it is also the owner of the pending application (1 mark); inform the applicant that it is possible to amend the cited application to correct CDN to Canadian (1 mark) since this change is not contrary to section 31(a) of the Trade-marks Regulations (1 mark); confusingly similar marks which are owned by the same person are registrable pursuant to section 15 of the Trade-marks Act (1 mark); once the amendment is recorded the objection will be withdrawn. (1 mark);

Suggest to conduct research to establish that the statement of services is described in ordinary commercial terms (1 mark); suggest to conduct a search of the register to provide evidence of other marks recently registered in association with the same or similar services (1 mark); also look for similar services/analogous description in the Wares and Services Manual. (1 mark)

Question 2 (5 marks)

Your client is relying on an application for the registration of a trademark in a country of the Union as a right of priority. The six month time limit to rely on the priority date falls on June 24th, which is a statutory holiday in Quebec where the Office of the Registrar is located. Please prepare a recommendation explaining whether the applicant's priority filing date is valid if the application is filed in Canada on June 25th and why.

Answer

According to the practice notice "dies non" or Section 66 (1 mark), any person choosing to deliver a document to a designated establishment (1 mark), is entitled to an extension of any time limit for the filing of the document that expires on the holiday (1 mark), until the next day that is not a holiday (1 mark). Therefore in this situation, his claim to priority would be acceptable. (1 mark)

Question 3 (3 marks)

What are the grounds of refusal in examination?

Answer

Application does not conform with formal requirements pursuant to section 30 of the Trade-marks Act (1 mark); that the trademark is not registrable (1 mark); that the applicant is not entitled to registration. (1 mark)

Question 4 (18 marks)

Please indicate yes or no whether the following trademarks would be registrable. Please ignore any possible confusion issues. Support your answer by citing the relevant provisions of the Trade-marks Act and/or Regulations. Briefly explain your reasoning. (1 mark for yes/no, 1 mark for section(s), 1 mark for reasoning)

  1. Lady Gaga — for use in association with entertainment services
  2. NO. 1 CANADIAN PET STORE — for use in association with the services "retail pet store services"
  3. PETERSON & Sons — for use in association with "printing services"
  4. THE BEST POUTINE IN THE WORLD — for use in association with "restaurant services"
  5. SOUTHPOLE — for use in association with "oranges"
  6. OLYMPIADES — for use in association with "sporting events"
Answer
  1. Lady Gaga — no 12(1)(e) and 9(1)(k); would require consent. Note no mark for 12(1)(a)
  2. NO. 1 CANADIAN PET STORE — no, 12(1)(b) descriptive of character and quality
  3. PETERSON & Sons — yes not primarily merely a name; 12(1)(a)
  4. THE BEST POUTINE IN THE WORLD — yes, 12(1)(b) suggestive
  5. SOUTHPOLE — yes, 12(1)(b) not clearly descriptive or deceptively misdescriptive
  6. OLYMPIADES — no 12(1)(i) prohibited by the Olympics and Paralympic Marks Act

Question 5 (3 marks)

You just received instructions from a US associate law firm on October 5, 2011 to file an application in Canada for the trademark DATAPLUS covering "database services" based on eventual registration and use in the United States. The application includes a Paris Convention priority filing date of September 5, 2011.

In your opinion, do you have sufficient information to file an application? What is required in this case to obtain a filing date?

Answer

No. (1 mark) In accordance with r. 25 of the TM Regulations (no mark for R 25 alone), you require the name and address of the applicant, (1 mark) the application fee. (1 mark)

Question 6 (2 marks)

How many extensions of time will the office grant in order to respond of an office action?

Answer

Generally the applicant will be granted one extension of time (1 mark), unless exceptional circumstance exists. (1 mark)

Question 7 (2 marks)

You filed an application with a priority filing date of January 23, 2011 in respect of wares. Upon receiving the notice of approval on August 25, 2011, you realized your error, namely that the priority filing date should extend to services as well. Can you amend the priority claim at this time? Why or why not?

Answer

No (1 mark), this amendment can only be made during the 6 months priority period. (1 mark)

Question 8 (2 marks)

Is a reference to a colour system alone sufficient to meet the requirement of section 28 of the Trade-marks Regulations? Why or why not?

Answer

No (1 mark), the applicant must provide a description of the colour. (1 mark)

Question 9 (3 marks)

Is the trademark GPS GLOBAL POSITION SYSTEM registrable for use in association with navigation systems? Why or why not?

Answer

No, (1 mark), The Office considers that the mere addition of an abbreviation, acronym or initial of a clearly descriptive word or phrase contained in the trademark will not render the trademark registrable. (2 marks)

Question 10 (Total of 5 marks)

Match the following cases with the legal principle addressed therein.

Case Legal Principle
a) General Motors Corp. v. Bellows (1949), 10 C.P.R. 101, at pp. 112-113 1) A composite mark, when sounded, is not registrable pursuant to paragraph 12(1)(b) of the Act if it contains word elements that are clearly descriptive or deceptively misdescriptive and that are dominant.
b) Best Canadian Motor Inns Ltd. v. Best Western International, Inc. (2004) FC 135 2) The purpose of a paragraph 12(1)(b) objection to registrability of a clearly descriptive word is that no one person should be able to appropriate such a word and place legitimate competitors at an undue disadvantage in relation to language that is common to all
c) Ontario Association of Architects v. Association of Architectural Technologist of Ontario (2002), 19 C.P.R. (4th) 417 (FCA) 3) A mark is not to be considered in isolation but rather in relation to the wares or services to which it is associated.
d) Mitel Corporation v. Registrar of Trademarks (1984), 79 C.P.R. (2d) 202 4) Mere embellishment of letters comprising a clearly descriptive mark does not render it registrable.
e) Canadian Jewish Review Ltd. V. The Registrar of Trademarks (1961), 37 C.P.R. 89 5) In order to determine that an Applicant is a public authority within the meaning of Section 9 of the Trade-marks Act one must establish that a significant degree of control is to be exercised by the appropriate government over the activities of the body and the activities of the body must benefit the public.
Answer

a) – 2; b) – 1; c) – 5; d) – 3; e) – 4; (1 mark each)

Question 11 (16 marks)

Your client is a commercial association named National Consortium located in the Okanagan Valley, British Columbia. It has a licensee who has produced and distributed grapes under the mark OKANAGAN since 1995. These goods are quality grapes that are grown in the well-known grape growing region of Okanagan under rigorous standards. Your client directly controls the quality of the wares produced and distributed by the licensee.

Your client wishes to protect its right in the mark OKANAGAN in Canada. Excluding section 9, indicate what are the available options. Briefly explain which options would be the best one and why, including reference to any relevant provisions of the Act and/or the Regulations.

Answer

Filing for the registration of a regular trademark application (1 mark) based on SS.16(1) by relying on date of first use by licensee (1 mark) in association with the wares covered under the license. SS.50(1) (1 mark) deems licensed use to ensure to the benefit of the trademark owner provided quality control is exercised (1 mark) as is the case here.

However since OKANANGAN is clearly descriptive (1 mark) of place of origin, a regular application would be considered contrary to paragraph 12(1)(b). Subsection 12(2) (1 mark) would only apply if, at the time the application is filed (1 mark), there has been use across Canada for an extensive period of time with extensive evidence of sales that translates in proven acquired distinctiveness, subject to territorial restrictions if no or few sales in certain provinces. (1 mark)

Since it is mentioned that the quality of the wares is of a defined standard, controlled by the client (1 mark), and the wares are produced and sold by a licensee (1 mark) (rather than the client), filing an application for the registration of a certification mark (S. 23) (1 mark) appears to be the best option.

The application would have to contain particulars, described in a meaningful way, of the defined standard (1 mark) that the use of the mark is intended to indicate (Para. 30(f) (1 mark) and Practice Notice (1 mark) dated 1998-07-15).

Although descriptive of place of origin of wares, assuming the mark is not confusing with any registered mark nor "deceptively mis-descriptive", deemed registrable (under S. 25) (1 mark) if the applicant is a commercial association having an office or representative in that area. (1 mark)

Question 12 (12 marks)

The Council of Natural Medicine of Upper Canada (the Council) is a body created by the Ontario legislature for the purpose of regulating doctors and the practice of medicine in the province. The Council has recently begun to advertise, particularly through ads in bus shelters, a new service called the "Health-line". It is a toll-free phone number that anyone in Ontario can call and get health questions answered by a doctor. Because many individuals in Ontario do not have a family doctor, the service, which has been in operation for only about four months, has been immensely popular. In view of the increased visibility of this service, the Council wants to protect the mark “Health-line” for this new service.

Is protection under Section 9 available to your client? What criteria does your client have to satisfy to obtain the protection? Please include reference to relevant case law and provisions of the Act and/or the Regulations.

Answer

Yes (1 mark) the Council can file for an official mark under paragraph 9(1)(n)(iii) (1 mark) of the Trade-marks Act.

To establish the public authority status, the Registrar will apply the two-part test (1 mark) (Ontario Association of Architects v. Association of Architectural Technologists of Ontario). (1 mark) It would be necessary to ensure that a Canadian government body (1 mark) exercises a significant degree of control over the activities of the Council. (1 mark) (Canada Post Corporation v. United States Postal Services) (1 mark)

The Council clearly performs a public service (1 mark) by promoting and providing advice to the public regarding health matters (1 mark) in accordance with the Practice Notice on official marks.

Before the Registrar can give public notice (1 mark), the Council will have to provide evidence of adoption and use (1 mark) in light of the Federal Court decision See You In — Canadian Athletes Fund Corporation v. Canadian Olympic Committee. (1 mark)

Question 13 (Total of 13 marks)

MVP Corporation ("MVP") has a strong reputation in Canada as a leading manufacturer of sporting goods. However, due to the recent down turn in the marketplace they have decided to focus their production efforts on their premium line of sporting goods which has a higher profit margin, and despite the current market conditions continues to be a very successful product line. MVP's subsidiary Fun & Sporty Inc. ("F & S") is taking over exclusive distribution of the less expensive line of children's sports toys which are sold under the registered trademark LITTLE LEAGUE.

13 a) — Is a written trademark license required? What are the requirements of the Act? (4 marks)

Answer

No. (1 mark) Under Section 50, of the TMA (1 mark) there is no requirement for a written license, trademark owner must maintain indirect or direct control (1 mark) over the character or quality of the wares and services (1 mark).

13 b) — Assuming MVP and F & S move forward with a written license, list 5 terms specific to a trademark license. (5 marks)

Answer

(1 mark for any of the following, or any other relevant terms up to a maximum of 5 marks)

Exclusive v.s. non-exclusive
Quality control and inspection
Term
Territory
Payment or royalty
Termination

13 c) — Over the next 2 years F & S has record sales of the LITTLE LEAGUE sporting goods. They have recently become aware of a major competitor selling a similar line of children's sporting goods under the name of LIL' LEAGUERS. Upon informing MVP of this potential infringement, MVP indicates that they do not want to take action against LIL' LEAGUERS. As a licensee can F & S take action against LIL' Leaguers? Why or why not? (4 marks)

Answer

May be able to depending on the provisions of the agreement (1 mark). If not contrary to the agreement, Section 50(3) (1 mark) allows licensee to institute proceedings for infringement in the licensee's own name as if the licensee were the owner (1 mark) making MVP a defendant. (1 mark)

Question 14 (Total of 15 marks)

An existing client asks you as their trademark agent to conduct a trademark availability search for BLUEBRIDGE used in association with restaurant services, namely the provision of food and beverage. The search results reveal the following trademarks owned by 5 separate legal entities:

Trademark Status Wares and Services
a) Bluebridge Registered Prepared and packaged frozen seafood, namely fish fillets, battered fish sticks, and battered shrimp
b) Bridge Blu Allowed Catering services
c) Bridges Registered Restaurant and lounge services
d) Blue Water & Bridge Design Renewed Commercial appliances namely, ovens for restaurants
e) Blueridge Abandoned Restaurant services

Indicate whether each of the trademarks listed above is a potential obstacle to registration of your client's trademark (yes or no) and give a short explanation as to why.

Answer
Trademark Yes / No Explanation
a) Bluebridge Yes / Possibly
  • Confusing, not uncommon for restaurants to sell food products at retail
  • potential overlap in the channels of trade
b) Bridge Blu Allowed
  • Confusing because services overlap, many restaurants provide catering services
  • Marks are phonetically and visually different but have similar connotations
c) Bridges Registered
  • Not confusing, due to the difference between the marks in appearance, sound and idea suggested by them
  • Common element BRIDGE, word BLUE helps to distinguish marks
d) Blue Water & Bridge Design Renewed
  • Not confusing due to the difference between the marks in appearance, sound and idea suggested
  • Different wares and services
  • Different channels of trade
  • Different target markets
e) Blueridge Abandoned
  • Mark is abandoned but still may be use under common law
  • Marks are phonetically similar

Question 15 (Total of 4 marks)

You conduct an availability search for the trademark HYWIRE owned by Tecsoft Corp. a longstanding client that manufactures computer software. Tecsoft has advised you that it intends to launch its new line of games under the HYWIRE trademark. The search reveals a registered trademark for HAYWIRE also for software for computer games. Your firm is recorded as the agent of record for the HAYWIRE registration. The HAYWIRE registration is owned by Gamescape Inc. a newer client to your firm.

15 a) — What do you advise Tecsoft? (2 marks)

Answer

Should advise client that you cannot provide an opinion because of the conflict of interest and offer to refer matter to a different firm or advise client to seek new counsel. (2 marks)

15 b) — Can you represent Gamescape against Tecsoft regarding its use of the trademark HYWIRE? Why or why not? (2 marks)

Answer

No. (1 mark). Agent has a conflict of interest because Tecsoft is a client and you have prior confidential knowledge of HYWIRE. (1 mark for either reason)

Question 16 (Total of 14 marks)

Five months ago your Canadian client filed two trademarks applications in Canada for the trademarks GREENBEAN and GREENBEAN & DESIGN both for organic coffee. The DESIGN is an original work of art, created by a local artist. The client's coffee beans are processed through a three step proprietary process, details of which are known only by the president of the company and his nephew. The president's nephew, an engineer, has designed and built the innovative processing equipment, with a unique shape. The client's website recently went live and they have experienced high volumes of sales to foreign jurisdictions including the United Kingdom, France, Belgium, Netherlands and Australia.

16 a) — Advise your client with respect to corresponding trademark filings in each of the jurisdictions above, any relevant deadlines and any international treaties or conventions that may offer added benefits. (6 marks)

Answer

Paris Convention, (1 mark) priority deadline is 6 months, (1 mark) applicant is given benefit of the Canadian filing date, (1 mark). Advise on foreign national filings, (1 mark) CTM filings (1 mark) and Benelux convention. (1 mark)

16 b) — What other forms of IP protection are or may be available in Canada and in respect of what features? (8 marks)

Answer
  • Copyright protection for GREENBEAN DESIGN (2 mark)
  • Trade secret for proprietary process (2 mark)
  • Patent protection for the unique processing equipment (2 mark)
  • Industrial Design for the look of the equipment (2 mark)

Question 17 (Total of 8 marks)

Identify the relevant sections of the Trade-marks Act or Trade-mark Regulations for each of the following:

17 a) — When a trademark registration is invalid. (2 marks)

Answer

Section 18, Section 57. (1 mark each)

17 (b) — Depreciation of goodwill. (1 mark)

Answer

Section 22. (1 mark)

17 c) — Retroactive extension of time in which to file a Declaration of Use. (1 mark)

Answer

Section 47(2). (1 mark)

17 d) — Registrar gives notice of default. (1 mark)

Answer

Section 36. (1 mark)

17 e) — Filing applicant's evidence in a trademark opposition (1 mark)

Answer

Rule 42(1). (1 mark)

17 f) — The entry of a trademark agent who has passed the qualifying examination on the list of trademark agents. (1 mark)

Answer

Rule 21(b)(i). (1 mark)

17 g) — Amendment to the trademark prior to advertisement. (1 mark)

Answer

Rule 31(b) (1 mark); no marks for mentioning Rule 30.

Question 18 (2 marks)

How is the Precious Metals Marking Act associated with trademark registration?

Answer

Where a quality mark is applied to a precious metal article it must also bear a trademark that has either been applied for or registered with the Registrar of Trademarks in Canada. (2 marks)

Question 19 (1 mark)

Is Canada a member of the Singapore Treaty on the Law of Trademarks?

Answer

No. (1 mark)

Question 20 (Total of 10 marks)

Review the following situations and indicate true or false. Cite the relevant provision of the Trade-marks Act or Trade-mark Regulations to support your answer.

20 a) — After advertisement, an applicant may file a revised application in which the statement of wares has been amended from "hats, shoes and scarves" to "hats and shoes". (2 marks)

Answer

True (1 mark), not contrary to rule 32(e). (1 mark)

20b) — According to the Trade-marks Act, you can register a word that constitutes the name of the wares or services so long as that word is not English or French. (2 marks)

Answer

Rule 31(b) (1 mark); no marks for mentioning Rule 30.

20 c) — After advertisement, the applicant can amend its application to change the trademark PACIFIC OCEAN BLUE  to OCEAN BLUE. (2 marks)

Answer

False (1 mark), contrary to rule 32 (a). (1 mark)

20 d) — The Trade-marks Act prohibits the registration of marks that contain matter that is obscene, scandalous or immoral. (2 marks)

Answer

True (1 mark), s 9(1)(k) of TMA. (1 mark)

20 e) — A clearly descriptive mark is never registrable. (2 marks)

Answer

False (1 mark), 12(2) and/or 14 of TMA (0.5 for each 12(2) and 14) (1 mark); no marks for mentioning section 25.


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