Archived — Trademark Agent Exam 2013 - Part A
Questions and answers — (150 Marks)
Question 1 (Total of 10 marks)
a) You are preparing a trade-mark application for a new client, Smartex Office Supply Co. List the six essential criteria for filing a complete application. (6 marks) (Only the first six answers provided will be marked)
- Applicant name (1 mark)
- Applicant address (1 mark)
- Trade-mark (1 mark)
- Description of wares and or services (1 mark)
- Basis of application (1 mark)
- Filing fee (1 mark)
Upon receiving the filing receipt you provide your client with your reporting letter and a copy of the filing notice. After reviewing the filing receipt your client advises that the applicant's name is incorrect, it should be Smartex Office Supply Co. Ltd.,
b) Can the name be corrected? If so, explain how. (2 mark)
Answerb)The Applicant name may be corrected by providing a declaration or affidavit (1 mark ) which indicates that at the time of filing the application Smartex Office Supply Co. was not an existing legal entity (1 mark) and that the correct legal name is Smartex Office Supply Co. Ltd.
The client also advises that the trade-mark design is incorrect, the client accidently provided the old format of their logo instead of their newly updated logo.
c) Can the design be amended? If so, explain why. (2 marks)
Answerc)The trade-mark may be amended (1 mark) as long as the new design does not alter the distinctive character of the mark. (1 mark), or the trade-mark may not be amended (1 mark) if the distinctive character of the mark is altered. (1 mark)
Question 2 (2 marks)
Can two individuals apply for a trade-mark, yes or no? (2 marks)
AnswerNo. (2 marks) OR Yes if operating in partnership together (2 marks) (or 1 mark for each answer if both parts are indicated.
Question 3 (2 marks)
Explain when a specimen may be required and cite the relevant provisions of the Trade-marks Actand/or Regulations. (2 marks)
AnswerRegistrar may require an applicant to provide a specimen of the trade-mark as used. (1 mark), Rule 29 (1 mark) (no marks for mentioning distinguishing guise)
Question 4 (4 marks)
Explain when a drawing may be required and cite the relevant provisions of the Trade-marks Act and/or Regulations. (4 marks)
AnswerIf the trade-mark is in a form other than a word or words not depicted in a special form, a drawing is required. (1 mark) Section 30 (h) (1 mark), rule 27 (1) (1 mark must specify sub section), and if colour is claimed as a feature of the mark rule 28. (1 mark)
Question 5 (2 marks)
When a trade-mark consists of colour applied to a three-dimensional object, is a colour claim necessary? Briefly explain why or why not. (2 marks)
AnswerNo. (1 mark) When a trade-mark consists of colour, a description of how the colour is applied to the visible surface of the wares is required. (1 mark)
Question 6 (2 marks)
You filed an application for your client one month ago and they have now advised you that it is imperative that the registration be obtained as soon as possible due to a possible infringement action. Can you request that the examination of the application be expedited, yes or no? Briefly explain why or why not. (2 marks)
Answer: No. (1 mark) According to practice notice dated June 14, 2013 given that examination generally occurs within six months of the date a trade-mark application is filed, the Registrar will no longer consider requests for expedited examination. (1 mark)
Question 7 (2 marks)
True or false: A geographical indication is the only way that the origin of a wine or spirit can be protected. In a sentence, support your answer.
False. (1 mark) Certification marks can also be used to protect a geographical indication of origin. (1 mark)
Question 8 (Total of 8 marks)
Your client Fishy Comics, Inc. (“Fishy”) currently publishes and sells a comic book called PIKE. The main character in the comic is a superhero called “Pike”. Fishy owns a registration for the trade-mark PIKE for comic books which it obtained in 1990. Fishy has also sold a small but steady amount of action figures and Halloween costumes marked with the PIKE trade-mark since 1995. There has been a resurgence in the marketplace in comic books and their associated characters and your client is hoping to cash in on this by selling merchandising items associated with the PIKE trade-mark such as t-shirts, hats, board games and video games.
a) Your client instructs you to file a trade-mark application for PIKE. List the grounds of application and associated wares for each ground. (2 marks)
action figures and Halloween costumes – use in Canada since 1995 (1 mark), t-shirts, hats, board games and video games – proposed use in Canada. (1 mark)
b) The application has been examined and the official letter raising a 12(1)(e) objection that the mark is not registrable due to the official mark PIKE, published under Section 9(1)(n)(ii) by Pictou University which is used as the name of its football team mascot. The official mark was published in the Trade-marks Journal dated July 12, 2000. In point form, please indicate how you would recommend overcoming this objection (1 mark) and why (1 mark).
Approach Pictou University to obtain consent (1 mark) since Section 9 prohibits the registration of the proposed mark. (1 mark)
c) Your client has decided not to proceed with the application and the application is voluntarily abandoned. Please advise if your client is entitled to use the PIKE mark in Canada (indicate yes or no) and, if so, for what wares and explain why. (4 marks)
Yes for comic books, action figures and Halloween costumes (1 mark) (must have all 3 for mark), No for t-shirts, hats, sweatshirts, board games and video games (1 mark) – Section 9 does not preclude using a mark for wares covered by a previous registration or on wares used prior to publication of the official mark. (2 marks)
Question 9 (4 marks)
Your client is an automobile manufacturer whose automobiles “play” a particular three note melody when the car is started. Please list the four requirements for an application for a sound mark.
- State that the application is for a sound mark. (1 mark)
- Contain a drawing that graphically represents the sound. (1 mark)
- Contain a description of the sound. (1 mark)
- Contain an electronic recording of the sound. (1 mark)
Question 10 (2 marks)
Your client realizes that there was a typographical error in their trade-mark while they were preparing their Declaration of Use. Your client asks you to make the correction. Is this correction possible, yes or no? (1 mark) Support your answer by citing the relevant provisions of the Trade-marks Act and/or its Regulations. (1 mark)
No (1 mark) – pursuant to paragraph/Rule 32(a) of the Trade-mark Regulations (1 mark)
Question 11 (4 marks)
Your client operates in both Canada and the US and it owns registrations for the trade-mark HOUSE OF PIZZA for restaurant services in both countries. In order to appeal to the patriotic nature of its patrons in both countries, wished to adopt stylized versions of the mark. For Canada, it is considering either (1) HOUSE OF PIZZA with an eleven-point maple leaf or (2) HOUSE OF PIZZA with a small Canadian flag. Would either of the marks be registrable? Indicate yes or no (2 marks) and give reasons for each proposed trade-mark (2 marks).
(1) HOUSE OF PIZZA with eleven-point maple leaf – yes (1 mark) – the right to the exclusive use of the eleven-point maple leaf must be disclaimed (1 mark) (2) HOUSE OF PIZZA with Canadian flag – yes (1 mark) – if disclaimed and get consent (1 mark) OR no (1 mark) – would need consent. (1 mark)
Question 12 (Total of 11 marks)
Your client wishes to obtain trade-mark protection for their uniquely shaped wine bottle.
a) Describe what a distinguishing guise is to your client. (3 marks)
AnswerA distinguishing guise is the shape of the wares (1 mark) or their container (1 mark) or a mode of wrapping or packaging the wares. (1 mark)
b) What criteria must your client meet in order for their distinguishing guise to be registrable? (4 marks). Cite the relevant provisions of the Trade-marks Act. (1 mark)
AnswerIt has been used in Canada by the applicant or his predecessor in title (1 mark) as to have become distinctive (1 mark) at the date of filing the application (1 mark),use is not likely to limit the development of art or industry (1 mark), Section 13. (1 mark)
c)Your client decides to proceed with an application for a distinguishing guise. What three requirements specific to distinguishing guises are necessary for filing the application? (3 marks)
AnswerDrawing showing various aspects of the mark (1 mark), evidence supporting acquired distinctiveness (1 mark), actual specimens. (1 mark)
Question 13 (4 marks)
The Water Wells for Kids (“Water Wells”) is incorporated as a non-profit organization in the Province of B.C. working in partnership with the B.C. Government Public Out Reach Program, and it is using the mark WISHING WELL in association with charitable fundraising services to raise money to drill water wells in underdeveloped countries and for education related services on the importance of the availability of clean drinking water. This organization now wishes to protect its rights in the mark WISHING WELL in Canada.
Is protection under Section 9 available to your client? Please indicate what criteria the applicant has to satisfy to obtain the protection? Please include relevant sections of the Trade-marks Actand/or Regulations.
Yes pursuant to Section 9(1)(n)(iii) (1 mark) if applicant qualifies as a public authority in Canada (1 mark). Criteria: (1) a significant degree of control by the appropriate government authority over the activities of the body and (2) the activities of the body must benefit the public (2 marks)
Question 14 (2 marks)
What constitutes “use” of a certification mark? Provide the leading case to support your answer.
The owner of a certification mark will be said to have used the mark if it licenses the mark to other parties who then affix the mark to its wares or advertisement for services that meet the designated standard of the certification mark (1 mark) Mister Transmission (International) Ltd. v. Canada (Registrar of Trade-marks) (1978), 42 C.P.R. (2d) 123 (Fed. T.D.)(1 mark)
Question 15 (Total of 5 marks)
Your client has an application for the trade-mark FIVE ISLANDS VILLAGE based on use for “rum”, which has yet to be advertised. Your client informs you they license use of the mark to certify (1) that the rum uses sugarcane grown in Antigua, (2) that the fermentation process uses a slower-working yeast which will cause more esters during fermentation and, (3) the distillation process is standardized using pot stills, which all results in the production of a fuller-tasting rum. They ask you to change their mark to a certification mark.
a) Can the client make the change from a regular trade-mark to a certification mark? Answer yes or no? (1 mark) Provide two reasons to support your answer. (2 marks)
Yes – (1 mark) the mark has not yet been advertised (1 mark) Can convert a regular trade-mark to a certification mark because the application is based on use by a licensee. (1 mark)
b) Did your client provide you with enough information to make the change? Answer yes or no? (1 mark) In one sentence, provide the rationale for your answer (1 mark).
Yes – (1 mark) There is enough information as they provided the additional requirement of a clearly defined set of standards. (1 mark)
Question 16 (Total of 11 marks)
Your client Drop of Moisture Inc. sells hand cream called RAINDROP in Canada. The word RAINDROP appears on the “raindrop” shaped bottle, as does a stylized raindrop design. The client is very proud of its product and it went to great expense developing the proprietary formula and retaining an outside graphic artist to design the stylized “raindrop” design that appears on the bottle in which the product is sold. The product has been very successful, and the one year anniversary of the first sale of the product in Canada is coming up.
Now that the product has established a successful foothold in the marketplace, the client is considering an extensive marketing campaign to celebrate the one year anniversary of the first sale of the product in Canada and wants to make sure that its intellectual property rights in Canada are protected.
a) Advise your client what regular trade-mark applications it could file for (2 marks).
- Trade-mark application for the word mark RAINDROP. (1 mark)
- Trade-mark application for Raindrop Design. (1 mark)
b) Advise your client if any other type of protection is available under the provisions of the Trade-marks Act, and if so, for what? (1 mark – you must indicate what type of protection and the IP right to be protected). Advise your client whether any materials or documents must be filed in support of such an application and, if so, what it must show (3 marks).
Distinguishing guise for bottle design (1 mark), must file evidence of use of the distinguishing guise in Canada (1 mark) so that has become distinctive at date of filing of application. (1 mark)
c) Advise your client if any other type of protection is available under any other Federal statutory provisions to protect its IP rights. You must indicate, in point form (1) the type of protection and what IP right is protectable (3 marks) and (2) any special considerations or limitations for each (only 1 reason will be accepted for each) (3 marks)
- Copyright protection for Raindrop Design (1 mark) and advisability of obtaining copyright assignement and waiver of moral rights. (1 mark)
- Trade secret or patent for proprietary formula (1 mark for either) and for patent must file within 1 year of publication. (1 mark)
- Industrial design for bottle shape (1 mark), within one year of first publication. (1 mark)
Question 17 (Total of 20 marks)
Your client, Tiki Cuisine Inc. has recently filed for the trade-mark ROLA in the United States for use in association with “burritos; alcoholic beverages, except beer; restaurant and bar services” and has asked you to perform a search for the mark in Canada. The search has located the following trade-marks:
|Trade-mark||Reg. No/App. No.||Wares/Services||Owner|
Reg. April 6, 2007
|Candy||253045 Ontario Inc.|
Reg. May 23, 2012
|Spirits, namely, rye.||123498 Alberta Inc. d/b/a Michael Newman Distilleries|
|c) ROLA AND HAT DESIGN
Reg. Sept 26, 1999
Operation of a Mexican restaurant.
|Tiki Cuisine Inc|
|d) TONY ROLA'S RESTAURANT||TMA789,465
Expunged Dec 16 2012
|Hamburgers, hot dogs, operation of a diner||Tony Rola's Restaurant Ltd.|
Reg. Aug 5, 2011
|Downloadable music podcasts.||The Cup of Ghosts|
Reg, Feb 8, 2010
|Operation of a rock and roll themed restaurant.||Rock N' Roll Forever Co.|
|g) LAS ROLAS||TMA623,523
Reg. June 11, 2006
|Wine; Operation of a wine bar.||Red or White LLC|
|h) SUSHI ROLLA & DESIGN
Advertised May 23, 2013
|Restaurant services||Hirosiku Inc.|
Provide a brief search opinion indicating whether each of the trade-marks listed above is likely to be an obstacle to the registration of your client's trade-mark. Answer with “yes or no” for each trade-mark. (0.5 marks each) In point form, support each opinion with a short explanation (2 marks each).
|Trade-mark||Answer (0.5 marks)||Explanation (2 marks)|
(no marks for other answers)
( no marks for other answers)
|c) ROLA AND HAT DESIGN
(no marks for other answers)
|d) TONY ROLA'S RESTAURANT||No||
full explanation required for full marks)
(no marks for other answers)
( no marks for other answers)
|g) LAS ROLAS||
(rationale must support the corresponding answers, no marks for other answers)
|h) SUSHI ROLLA & DESIGN
(no marks for other answers)
Question 18 (5 marks)
Further to the search results above, a quick look on the Internet revealed the following:
a) ROLA has thirty (30) surname entries on Canada411;
b) ROLA has an obsolete meaning in Polish; and
c) ROLA is an acronym standing for Rest Of Latin America.
As a result of this Internet search, do you anticipate any objections from the Trade-mark Office? Indicate yes or no and provide a brief explanation for each one. Support your decision with any supporting cases, Practice Notices, relevant provisions of the Trade-marks Act and/or Regulations.
a)Yes – surname objection (1 mark) identify 12(1)(a) of the Act (1 mark) identify Practice Notice Name or Surname(1 mark) Gerhard Horn Investments Ltd v. Canada (Registrar of Trade-marks) (1983), 73 C.P.R. (2d) 23 (Fed. T.D.) or MARCO PECCI case. (1 mark)
b) No - Office would have no issue with an obsolete meaning (.5 mark)
c) No - Office would have no issue with ROLA as an acronym (.5 mark)
Question 19 (Total of 11 marks)
On September 12, 2013, you received an email from your client MNOP Inc., located at 1234 Joshua Drive, Jacksonville, Florida, 32000 USA to file an application for the trade-mark ZIGZAG in Canada. Your client forwarded the following information and advised you that he wasn't going to be available to answer any further questions until he returned from his business trip. He informed you that a United States application was filed on March 11, 2013, based on use in the United States since February 3, 2013, covering “sauces, t-shirts, dairy products, postage stamps; banking services, dry cleaning services and the operation of a supermarket”. Further, your client has also begun use of the trade-mark in Canada for the same wares and services sometime in February.
a) In point form, draft a reporting letter to your client advising as to what grounds of application could be claimed. (2 marks) Support your answers by citing the relevant provisions of the Trade-marks Act and/or its regulations (1 mark).
- use of the mark in Canada sinceFebruary 2013, which the office will consider to be the last date of the month (1 mark); subsection 16(1) of the Act (0.5 mark)
- use and application for registration of the mark in the United States (1 mark) ; subsection 16(2) of the Act (0.5 mark)
b) In point form, set out any potential issues with the application that could result in the issuance of an Official Action from the Trade-marks Office. (6 marks) Support your answers by citing the relevant provisions of the Trade-marks Actand/or its Regulations. (2 marks)
- certified copy required of the United States application when it issues to registration and the $50 fee. (1 mark) for mentioning subsection 31(1). (0.5 mark)
- indicating that “sauces” is not an acceptable ware (1 mark), for indicating under paragraph 30(a) (0.5 mark)
- for indicating that “postage stamps”, is acceptable under paragraph 30(a) (1 mark) but is not acceptable subject to the Canada Post Corporations Act (1 mark), for stating together with paragraph 30(i) (0.5 mark).
- for indicating that “banking services”, is acceptable under paragraph 30(a) (1 mark) but is not acceptable subject to the regulations of the Bank Act (1 mark), for stating together with paragraph 30(i). (0.5 mark)
Question 20 (Total of 5 marks)
Pinnacle Software Corp. ("PSC") has received a Section 45 notice for their PINNPOINT trade-mark registration. PINNPOINT software has been sold exclusively under license by PSC's subsidiary Pinnacle Field Services Inc. ("PFSI").
a) Is a written license between PSC and PFSI required, yes or no? (1 mark)
AnswerA written license is not required (1 mark)
b) Is use by PFSI sufficient to prove use, yes or no? Provide rationale to support your answer (3 marks) and identify the relevant Section of the Trade-marks Act. (1 mark)
AnswerYes or No depending on rationale - use by a licensee is considered use by the owner, if the owner has direct (.5 mark) or indirect control (.5 mark) [no mark for just saying control] of the character (1 mark) or quality of the wares (1 mark), Section 50. ( 1 mark)
Question 21 (3 marks)
On December 26th you receive a fax from a foreign associate instructing you to file a Canadian trade-mark application relying on the application of a trade-mark in a country of the Union as a right of priority. The six month time limit to rely on the priority date falls on December 26th. Given that your office is closed for the Christmas holidays you file the application when you return to the office on December 27th. Is the priority filing date valid? (1 mark) Briefly explain why or why not. (2 marks)
AnswerClaim of priority would be acceptable. (1 mark) December 26th is a Statutory holiday, the Office is closed (1 mark), any person choosing to deliver a document to a designated establishment is entitled to an extension of any time limit for the filing of the document that expires on the holiday, until the next day that is not a holiday. (1 mark)
Question 22 (2 marks)
You file an application on behalf of a US applicant one month after the filing of the US application and claim the benefit of convention priority. You immediately report the filing of the Canadian application and the client notes that there is a clerical error in the filing date of the priority application and that it is actually one day later than as stated in the Canadian application as filed. Can this be corrected? Answer yes or no (1 mark) and give one reason why or why not. (1 mark)
Yes (1 mark) because within six month convention priority period (1 mark)
Question 23 (Total of 3 marks)
a) Your client wishes to assign their trade-mark to a third party. Is it possible to assign the rights in respect of some but not all of the wares covered by the registration? (1 mark)
AnswerYes. (1 mark)
b) List two filing requirements necessary to record an assignment at the Trade-marks Office. (2 marks) (only the first two answers provided will be marked)
AnswerRequest to assign the mark which identifies the assignor and assignee or a signed assignment (1 mark for either), and fee. (1 mark)
Question 24 (1 mark)
Will the trade-marks Office accept an assignment which is only signed by the assignee? (1 mark)
AnswerNo. (1 mark)
Question 25 (2 marks)
Will the Trade-marks Office accept an assignment of one trade-mark that is associated with another? Answer yes or no (1 mark) and support your answer. (1 mark)
AnswerYes (1 mark), the Office will accept the assignment if the wares and or services are different or unrelated so as to not cause a likelihood of confusion. (1 mark) OR No (1 mark) the Office will not accept the assignment of the trade-mark if associated with another mark not included in assignment (1 mark)
Question 26 (1 mark)
You have filed an assignment to transfer ownership in several trade-mark registrations to a new owner. The Office has issued an official letter indicating that the assignment cannot be recorded because there is an associated mark not included in the assignment schedule. What is the deadline to respond to the official letter?
The Office does not set a time limit to respond to official letters regarding deficiencies in assignments (1 mark)
Question 27 (1 mark)
Your client's company name changed as a result of an amalgamation with a related company. What documents are required by the Trade-marks Office to record the change? (1 mark)
AnswerCertificate and Articles of Amalgamation or a request which describes the change in chain of title. (1 mark for either)
Question 28 (Total of 15 marks)
Please indicate yes or no whether the following trade-marks would be registrable. You must indicate (1) “yes” or “no” in your answer and support your answer by indicating (2) the most relevant provisions of the Trade-marks Act and/or Regulations and (3) the most significant reason to support your answer. Please ignore any confusion issues and do not assume any acquired distinctiveness. (3 marks each)
a) ABRAHAM LINCOLN for use in association with clothing
b) ULTRA CLEAN for use in association with laundry detergent
c) JOE'S GOVERNMENT APPROVED for use in association with pest control agency services
d) JONES & SONS for use in association with residential construction services
e) CALZARE for use in association with shoes, t-shirts, pants (CALZARE is Italian for “shoes”)
a) Yes (1 mark), 12(1)(a) (1 mark), not prohibited because individual dead more than 30 years (1 mark)
b) No (1 mark), 12(1)(b) (1 mark), clearly descriptive of the character or quality of the goods (1 mark)
c) No (1 mark), 12(1)(e) and 9(1)(d) (1 mark – need both for one mark), suggests governmental approval (1 mark)
d) Yes (1 mark), 12(1)(a) (1 mark), not prohibited since mark as a whole not primarily merely a surname (1 mark)
e) No for shoes, yes for t-shirts, pants (1 mark), 12(1)(c) (1 mark), name of the wares in Italian for shoes, not for t-shirts, pants (1 mark)
Question 29 (Total of 6 marks)
Match the case name with the applicable legal principle.
|Case name||Applicable legal principle|
|A. Molson Breweries v. Labatt Brewing (1996) 69 C.P.R. (3d) 274 (T.M.O.B.)||1. The response of the general public to a surname needs to be considered.|
|B. Standard Oil Co. v. Registrar of Trade-marks (1968) 55 C.P.R. 49 (E.C.C.)||2. The Office will not accept an application for the registration of a certification mark unless the applicant sets out in a meaningful way the particulars of a defined standard.|
|C. Parke Davis and Co. v. Empire Laboratories Ltd. (1964)43 C.P.R. 1 (S.C.C.).||3. The two-part test for a Section 9 mark states that the applicant must have a significant degree of government control and that their activities must benefit the public.|
|D. Dracket Co. of Canada Ltd. v. American Home Products Corp. (1968) 55 C.P.R. 29 (E.C.C.)||4. A common dictionary meaning of a word could result in a surname no longer being considered to be “primarily merely” a surname.
|E. Ontario Association of Architects v. Association of Architectural Technologists of Ontario (2002) 19 C.P.R. (4th) 417 (F.C.A.)||5. If a mark is considered functional, it cannot be distinguishing and, therefore, it cannot be considered registrable.|
|F. Elder's Beverages (1975) Ltd. v. Canada (Registrar of Trade-marks) (1979) 44 C.P.R. (2d) 59 (F.C.T.D.)||6. The definition of “clearly” is “easy to understand, self-evident or plain”.|
A-2; B-1; C-5; D-6; E-3; F-4
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