Archived — Trademark Agent Exam 2012 - Part A

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Questions and answers — (150 Marks)

Question 1 (12 marks)

You have received an Examiner's Report on August 13, 2012 regarding your client's application for the registration of the trademark THE PURPLE BOAT in association with "tools". The Canadian application was filed on the basis of use in the U.S. and a registration in the U.S. (registered on May 9, 2012, registration no. 4567123) and on the basis of proposed use in Canada.

The Examiner states that the mark does not appear registrable under section 12(1)(e) of the Trade-marks Act. The Examiner has cited the prohibited mark PURPLE BOAT adopted by the University of Nunavut. The Examiner also objects to the registration of the mark in view of paragraph 12(1)(d) of the Trade-marks Act, since he considers the mark to be confusing with the mark THE PURPLE MACHINE in association with "Machine tools for the textile Industry". Also, the Examiner objects to the statement of wares and requires that the wares be described in ordinary commercial terms. Furthermore, the Examiner states that the mark appears to have been filed in colour and asks for clarification as to whether colour is claimed as a feature of the mark. Finally, the Examiner requests a certified copy of the corresponding U.S. registration.

In point form, draft a letter to your client, advising them how you would respond. Make sure to provide all important information to your client, your recommendation as to how to respond and request any information necessary for you to answer. Support your answers by citing the relevant provisions of the Trade-marks Act and/or its regulations.

Answer
  • Time limit to respond (6 months) (1 mark)
  • 12(1)(e) objection could be overcome by getting consent from the University of Nunavut (1 mark), pursuant to paragraph 9(2)(a) of the Trade-marks Act (1 mark)
  • 12(1)(d) can be overcome by stating that the marks are different in the idea suggested (1 mark), the first portion is not enough to create confusion (1 mark), and redefining the wares could overcome the objection (1 mark).
  • 30(a): Wares must be set out in ordinary commercial term under section 30(a) of the Trade-marks Act. (1 mark for the sub-section) Suggest referring to the Wares and services Manual to get a list of acceptable wares. (1 mark) Ask the client the nature of the tools (1 mark)
  • Colour claim: If client wishes to claim color, it has to be done providing a clear description of the colour(s) that are claimed as a feature of the trademark (1 mark).
  • Certified copy of U.S. registration (or photocopy of same) required to be filed (1 mark) + $50.00 government fee (1 mark).

Question 2 (4 marks)

You have a client who wishes to apply for a sound mark. What are the four (4) elements required in order to file an application for registration of a trademark consisting of a sound.

Answer

No marks for general s. 30 requirements.

  • state that the application is for the registration of a sound mark; (1 mark)
  • provide a drawing that graphically represents the sound; (1 mark)
  • provide a description of the sound; (1 mark)
  • provide an electronic recording of the sound. (1 mark)

Question 3 (4 marks)

For each of the following situations, indicate yes or no whether an additional extension of time to respond to an Examiner's Report is likely to be granted pursuant to the Practice Notice "Extensions of time in examination".

3 a) — Applicant is in ongoing negotiation to obtain consent with respect to an official mark.

Answer

Yes (1 mark)

3 b) — Applicant is travelling a lot and is constantly out of the Country; however he will be in Canada in the upcoming months.

Answer

No (1 mark)

3 c) — The application contains an incomplete 16(2) claim and the Applicant is requesting more time in order to confirm use of the trademark abroad.

Answer

No (1 mark)

3 d) — The trademark has recently been assigned.

Answer

Yes (1 mark)

Question 4 (3 marks)

You filed an application on behalf of your client on February 22, 2012, on a basis of proposed use in Canada. On August 23, 2012, while the application is still in examination, your client advises you that he wishes to add a claim for registration and use abroad since he has a United States registration dated April 10, 2012 for the same mark. Can you add the claim? Why or why not, with reference the relevant provision of the Trade-marks Act and/or Trade-mark Regulations?

Answer

Yes (1 mark) Since it's prior to advertisement (1 mark) pursuant to paragraph 32(d) of the Trademarks Regulations.(1 mark)

Question 5 (2 marks)

True or false: To obtain a registration of a certification mark, it is not necessary to define the standard that the use of the mark is intended to indicate. Cite the relevant provision of the Trade-marks Act (2 marks)

Answer

False. (1 mark) 30(f) of the Trademarks Act. (1 mark)

Question 6 (5 marks)

6 a) — What are the elements of the test that an entity must satisfy in order to qualify as a public authority in Canada? (4 marks)

Answer
  • a significant degree of control (1 mark) must be exercised by an appropriate Canadian government over the activities of the body (1 mark)
  • the activities of the body must benefit the public (2 marks)

6 b) — Cite the leading case? (1 mark)

Answer

Ontario Association of Architects v. Association of Architectural Technologies of Ontario (1 mark)

Question 7 (1 mark)

True or false: Internal use of an official mark in correspondence, e-mails or memoranda can be considered evidence of adoption and use?

Answer

False (1mark)

Question 8 (4 marks)

Section 9 of the Trade-marks Act relates to two categories of prohibited marks, absolute prohibitions and relative prohibitions. Indicate two provisions of the Trade-marks Act as an example for each (for a total of four subsections)

Answer

Absolute: any of 9(1)(a),(b),(c),(d),(f),(g),(g.1),(h),(h.1),(i.2),(j),(k),(l),(m) (2 marks)

Relative: any of 9(1)(e),(i),(i.1),(i.3),(n)(i),(ii),(iii) (2 marks)

Question 9 (1 mark)

In order to determine whether the applied for mark so nearly resembles as likely to be mistaken for an official mark, what is the only factor to consider?

Answer

Resemblance of the marks (1 mark)

Question 10 (9 marks)

Your client 2+ Design Corp. is an up and coming Canadian clothing company. They filed a Canadian trademark application for 2+ & Design in Canada, on May 5, 2012 for ladies' and men's casual wear. The client has expressed an interest in obtaining foreign trademark protection.

10 a) — What is the deadline to claim priority? What is the benefit of claiming priority and what initial step(s) would you advise the client to take before proceeding with any foreign applications (5 marks).

Answer

Priority filing date is November 5, 2012 (1 mark)

Benefits of priority filing, application is given the priority filing date of May 5, 2012 in foreign jurisdictions (2 marks)

Recommend to conduct searches in foreign jurisdictions to determine availability (2 marks)

10 b) — Your client has decided to proceed with applications in France, Italy and the United Kingdom. Advise your client with respect to the filing options in these jurisdictions? (2 marks)

Answer

May file national applications in each jurisdiction separately (1 mark)
May file for a CTM registration (1 mark) which will provide protection in selected countries as well as in other European jurisdictions.

10 c) — Through a business mentor, your client has learned about the Madrid Protocol. Your client enquires whether it will be possible to file the application via the Madrid system. Advise your client whether this is possible and why or why not. (2 marks)

Answer

It will not be possible to use the Madrid filing systems as the applicant is a Canadian corporation (1 mark) and Canada is not a member of the Madrid Protocol. (1 mark)

Question 11 (4 marks)

You have received a notice of allowance from CIPO for your client's trademark application that was filed in Canada based on proposed use, and use and registration abroad. The client advises that the Applicant will likely not have use in Canada before the Declaration of Use becomes due. Advise your client on two options available to maintain the application.

Answer
  • The applicant may obtain an extension of time in which to file the Declaration of Use in order to commence use in Canada (2 marks)
  • The applicant may delete the proposed use basis from the application and proceed to registration based on use and registration abroad (2 marks)

Question 12 (4 marks)

You receive instructions from a foreign associate in Australia to file an application for the registration of a trademark in Canada claiming priority from an Australian application. The agent provided the Applicant name, the trademark and the description of wares.

12 a) — What further information is required to file the application and what else is required in order to obtain a filing date? (4 Marks)

Answer
  • Address of the applicant (1 mark)
  • Filing basis of the application or reference to Section 16 (1 mark for either)
  • Priority filing date (1 mark)
  • Application fee (1 mark)

Question 13 (8 marks)

Your client has recently acquired the trademark rights of AMC Energy Corporation in a less than amicable transaction. AMC owns a number of Canadian trademark registrations. AMC refuses to provide an assignment of trademark for recording in the Trademarks Office.

13 a) — What documentation can be provided to CIPO in order to record the change of ownership? (2 marks)

Answer

A declaration or affidavit provided on behalf of the Assignee confirming the change in title and the Agreement that sets out the transfer of the trademarks (2 marks for either)

13 b) — You now learn that two of the trademarks which are supposed to be owned by AMC are in fact registered in the name of 565899 Alberta Ltd. A search of the Alberta corporate records shows that 565899 Alberta Ltd. changed its name to AMC Holdings Inc. and then amalgamated with CANCO Energy Ltd. to form AMC Energy Corporation. What information or documents must be provided to CIPO to show the chain of title and record the change of ownership? (4 marks)

Answer
  • Relevant date of each change (1 mark)
  • Name change from 565899 Alberta Ltd to AMC Holdings (1 mark)
  • Amalgamation of AMC Holdings and CANCO Energy to form AMC Energy Co. Inc. (1 mark)
  • Declaration or affidavit confirming change of ownership or copy of agreement to assign (1 mark for either)

13 c) — AMC is also the owner of trademarks in several foreign jurisdictions. Describe the additional documents/requirements that may be necessary to record the assignment in the foreign jurisdiction. (2 marks)

Answer
  • Translation and legalization (1 mark for each)

Question 14 (4 marks)

You previously filed an application for a UK associate in Canada. The application was filed based on proposed use in Canada for wares and services with a priority claim to the corresponding UK application. You have now received an Office Action from CIPO enquiring whether the priority claim in the application is valid because the Applicant's address provided in the application is in India. Describe three ways to respond to the Office Action.

Answer
  • Confirm that the Applicant is a domicile of the UK (1 mark) or has a real and effective industrial or commercial establishment (1 mark)
  • Delete the priority claim (1 mark) and proceed on the basis of proposed use only (1 mark)

Question 15 (8 marks)

Your client, Cortex Technologies LP is a manufacturer of high tech fibers which are utilized by clothing and textile manufactures. Cortex has developed a new fire retardant fiber called COR-SAFE for use by industrial clothing manufacturers in coveralls. Due to the specialized nature of the fiber, Cortex has developed guidelines for manufactures in order to maintain the integrity of the COR-SAFE fiber during manufacturing of the coveralls. Cortex is also developing an extensive marketing campaign to promote this new standard in flame retardant garments.

Your client wishes to protect the COR-SAFE trademark. Briefly explain the options available, include references to the relevant provisions of the Act and/or Regulations.
Answer
  • Cortex could apply to register COR-SAFE as a regular trademark (1 mark) for use in association with fire retardant fibers (1 mark).
  • Cortex could apply to register COR-SAFE as a certification mark (1 mark) for coveralls (1 mark) under Section 23 of the Act (1 mark) since it is not engaged in the manufacture or sale of coveralls (1 mark). Cortex may license (1 mark) the COR-SAFE trademark to others to use the mark in association with coveralls that meet the define standard (1 mark) in flame retardant garments.

Question 16 (10 marks)

Energy to Burn Corp. has developed a new great tasting energy drink called BurnON with a proprietary herbal formula. They have been selling the drink in Canada for the past six months and can barely keep up with demand. The drink is sold in a flame shaped bottle.

The flame shape also appears as part of the BurnON logo on the bottle.

Your client seeks your advice on how to protect its intellectual property in Canada. Advise your client on the types of protection available and if any have any special requirements, please elaborate.
Answer
  • Regular trademark for BurnOn (1 mark)
  • Design trademark for the BurnOn logo (1 mark)
  • Industrial design for bottle shape (1 mark) filed within one year of first publication (1 mark)
  • Distinguishing guise (1 mark), at the time of filing the application (1 mark) must establish that bottle is in use (1 mark), and distinctive in Canada (1 mark)
  • Trade secret or patent for proprietary formula (1 mark for either) and for patent must file within one year of publication (1 mark)

Question 17 (20 marks)

You have conducted a trademark search for the proposed trademark Golf4Gurlz for use in association with ladies sportswear, golf shoes, hats. The search located the following trademarks, each owned by a different entity:

Trademark Reg. No/App. No. Wares/Services
GOLF FORE KIDS TMA 658,974
Reg. June 24, 2009
Providing golf lessons and clinics
GIRL GOLFING DESIGN
GIRL GOLFING DESIGN
TMA458,921
Reg. Sept. 5, 2007
Golf clubs
JUST 4 GURLZ TMA782,623
Reg. Feb. 11, 2011
Ladies waterproof outerwear namely, jackets and pants
GOLF FOR GIRLS TMA 789,465
Expunged Oct. 2011
Golf shoes, golf hats
FORE GOLF DESIGN
FORE GOLF DESIGN
TMA741,526
Reg. July 17, 2011
Lawn fertilizers
GEAR4GOLF TMA698,143
Reg, Jan. 9, 2010
Golf club covers, putter covers, golf bags, umbrellas,
4 HER ONLY TMA623,523
Reg. April 29, 2006
Perfume and body soaps
4GURLZ App. 1,585,232
Advertised May 1, 2012
Clothing for children, namely shirts, t-shirts, sweaters, jackets, pants, shorts, skirts, capri pants, pajamas, underwear and socks

Indicate whether each of the trademarks listed above is likely to be an obstacle, in examination, to registration of your client's trademark (yes or no) and give a short explanation as to why or why not.

Answer
Trademark Answer (0,5 mark) Explanation (2 marks)
GOLF FORE KIDS No
  • Similar idea suggested and sound but marks are inherently weak
  • Services not wares
GIRL GOLFING DESIGN
GIRL GOLFING DESIGN
No
  • Different marks
  • Different wares
JUST 4 GURLZ Yes/No
  • Similar idea suggested, similar marks
  • First element different
  • co-exists with 4GURLZ
(explanation needs to support the answer to get the marks)
GOLF FOR GIRLS No
  • expunged registration not a barrier to registration
FORE GOLF DESIGN
FORE GOLF DESIGN
No
  • Different marks
  • Different wares and channels of trade
GEAR4GOLF No
  • Marks are different and inherently weak
  • Wares are sufficiently different given weak marks
4 HER ONLY No
  • Marks are different
  • Different wares
4GURLZ Yes/No
  • Marks are different because prefix is different
  • co-exists with JUST 4 GURLZ
  • If answer is no, must indicate that marks are inherently weak
(explanation needs to support the answer to get the marks)

Question 18 (18 marks)

Please indicate yes or no whether the following trademarks would be registrable. Please ignore any possible confusion issues and do not assume any acquired distinctiveness. Support your answer by citing the relevant provision of the Trademarks Act and/or Regulations and give the most significant reason to support your answer.

  1. STA-DRI for use in association with umbrellas.
  2. SHAZAM CANADA REVENUE AGENCY APPROVED for use in association with tax preparations services.
  3. WINSTON CHURCHILL for use in association with cigars.
  4. TAVOLO for use in association with tables; bookcases (TAVOLO is Italian for "table").
  5. OTTAWA POLITICS for use in association with a political blog.
  6. SMITH AND JONES for use in association with speech writing services.
Answer
  1. No. (1 mark), Section 12(1)(b). (1 mark) clearly descriptive of the character or quality of goods. (1 mark)
  2. No. (1 mark) Section 12(1)(e) and 9(1)(d) (1 mark – need both for the mark), suggests government approval (1 mark)
  3. Yes. (1 mark), 12(1)(a) (1 mark) not prohibited because individual dead more than thirty years. (1 mark)
  4. No for tables, yes for bookcases (1 mark), section 12(1)(c) (1 mark), name of the wares in Italian for tables but not for bookcases. (1 mark)
  5. No. (1 mark) 12(1)(b). (1 mark), clearly descriptive of the character or quality of the wares or place of origin. (1 mark)
  6. Yes. (1 mark), 12(1)(a). (1 mark), trademark as a whole not a name or surname. (1 mark)

Question 19 (2 marks)

Can your client ABC Inc. register a painting of Stephen Harper's image as a trademark in Canada? Please support your answer with reference to relevant provisions of the Trademarks Act and/or Regulations.

Answer

No. (1 mark), section 12(1)(e) and 9(1)(l) assuming the portrait is a recognizable one. (1 mark – need to mention both subsections to get the mark)

Question 20 (2 marks)

Can an application for registration of a trademark as a distinguishing guise be based on section 14 of the Act? Why or why not.

Answer

No (1 mark) section 13(1)(a) requires use in Canada so as to have become distinctive as of the date of filing. (1 mark)

Question 21 (3 marks)

List three things specific to a distinguishing guise application that must be provided to the Trademarks Office in order to register a trademark as a distinguishing guise?

Answer (1 mark for each) (no marks for general s. 30 information)
  • date of first use in Canada
  • evidence, by way of affidavit or statutory declaration, establishing the distinctiveness of the guise in Canada as of the filing date (must state as of the filing date to get the mark)
  • drawings showing the trademark

Question 22 (3 marks)

Seven years ago, HAL Computers introduced a circular shaped computer monitor to the Canadian marketplace. HAL registered the shape of the monitor as a distinguishing guise in the Canadian Trademarks Office two years ago. Last year, a well respected technical journal published a study proving that circular shaped computer monitors are more energy efficient and perform better ergonomically for users.

You have been approached by HAL's competitor, IQ Computers, that wants to introduce a circular monitor in the Canadian marketplace. IQ has asked whether it is possible to expunge HAL's registration for its circular monitor as a distinguishing guise. Please advise IQ whether it is possible to do so. Please cite the relevant provision of the Trademarks Act and provide one reason for your answer.

Answer

Yes, it is possible. (1 mark) Section 13(3) of the Trademarks Act (1 mark) provides for the expungement by the Federal Court of a registration that has become likely unreasonably to limit the development of any art or industry. (1 mark)

Question 23 (6 marks)

You previously represented BB Lean USA Inc., a well known clothing manufacturer and retailer. As part of your retainer, you have registered trademarks on behalf of BB Lean and assisted with the negotiating and drafting of license agreements with its Canadian licensee BB Lean Canada.

You have now been retained by BB Lean Canada and asked to assist it in the launch of a new business line directed toward energy drinks. BB Lean Canada has asked you to search several trademarks incorporating the letters BB and apply to register those which are available.

BB Lean USA has learned of BB Lean Canada's plans and it has contacted you because it believes that BB Lean Canada is in contravention of the license agreement. BB Lean USA has asked to you send a letter to BB Lean Canada terminating the license agreement and requesting that BB Lean Canada immediately cease all use of the letters BB and any of the BB Lean trademarks in association with energy drinks or otherwise.

23 a) — Can you carry out BB Lean USA's instructions? Why or why not. (3 marks)

Answer

No. (1 mark), conflict of interest (1 mark) because BB Lean Canada has also retained you as an agent. (1 mark)

23 b) — While BB Lean USA awaits your advice, its general counsel has sent a letter to BB Lean Canada putting it on notice as to BB Lean USA's legal position. BB Lean Canada has contacted you in order to advise it as to its legal rights in Canada.

Can you advise BB Lean Canada as to its legal rights? Why or why not. (3 marks)

Answer

No (1 mark), cannot represent BB Lean Canada against a former client BB Lean USA (1 mark), particularly regarding the license which you helped to negotiate and draft. (1 mark)

Question 24 (4 marks)

You have been approached by Mr. Robert and Mr. Douglas, partners in Take Off LLP. Take Off LLP owns ten registered trademarks, all including the words TAKE OFF. Five of the trademarks are registered for use in association with various clothing products. The other five trademarks are registered for use in association with various food products. All ten trademarks are currently listed as associated by the Trademarks Office.

Mr. Robert and Mr. Douglas now wish to dissolve the partnership with Mr. Robert assuming responsibility for the clothing business and Mr. Douglas assuming responsibility for the food product business. Between them, they have agreed that Mr. Robert will own the five trademarks relating to clothing, and Mr. Douglas will own the five trademarks relating to food products.

Mr. Robert and Mr. Douglas have both agreed to have you represent them and have waived any potential conflict of interest.

Please advise Mr. Robert and Mr. Douglas as to whether they can own the trademarks as they propose and, if so, what is required to be done.

Answer

Yes, it is possible. (1 mark) You must file an assignment from Take Off LLP to Mr. Robert and Mr. Douglas for the various trademarks that they will own. (1 mark) With the letter to the Trademarks Office you must also ask the Trademarks Office to disassociate the trademarks on the basis that the concurrent use by different owners for the wares and services would not be likely to cause confusion within the meaning of section 6. (2 marks)

Question 25 (2 marks)

Your client owns two trademark registrations which are associated pursuant to section 15. It wishes to license the use of one of the trademarks to a third party. Can it do so? Why or why not.

Answer

Yes. (1 mark) No requirement under section 15 that associated trademarks must all be licensed. Since use by licensee enures to the benefit of the licensor, no issue with respect to distinctiveness. (1 mark for either)

Question 26 (5 marks)

Match the case name with the applicable legal principle.

Case Name Principle
a.
Canadian Rehabilitation Council for the Disabled dba Easter Seals/March of Dimes National Council v. Rehabilitation Foundation for the Disabled dba Ontario March of Dimes (2004), 35 CPR (4th) 207 (F.C.T.D.)
1.
During the examination process, when pending marks are confusing, the Applicant with the earlier filing date or priority date will be considered the person entitled to registration of the trademarks.
b.
Attorney General of Canada v. Effigi (2005), 41 CPR (4th) 1 (F.C.A.)
2.
Evidence of adoption and use of an official mark by a licensee will not be considered adoption and use by the public authority.
c.
See You In Canadian Athletes Fund Corporation v. Canadian Olympic Committee (2007), FC 406
3.
Advertising and marketing relating to products of the Applicant does not constitute a service pursuant to section 4 of the Trademarks Act.
d.
W.R. Grace & Co. v. Union Carbide Corp. (1987) 14 CPR (3rd) 337 (F.C.A.)
4.
An official mark must be adopted and used before the Registrar can publish notice of the official mark.
e.
Ralston Purina Co. v. Effem Foods Ltd. (1997) 81 CPR (3rd) 528 (TMOB)
5.
To rely upon section 14, a foreign registration of the trademark must exist at least until the date upon which registration is granted in Canada.
Answer

a2, b1, c4, d5, e3

Question 27 (2 marks)

Does the marking of a trademark on packaging of wares, when the wares are exported from Canada, constitute use of the trademark in Canada in association with wares? Please support your answer with the relevant provision of the Trade-marks Act and/or Regulations.

Answer

Yes (1 mark) section 4(3) of the Trademarks Act. (1 mark)


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