Trademarks Examination Manual — Page 4 of 5

On this page:

  1. Examination of the Mark
    1. Purpose of Examination
    2. Definition of Trademark
    3. Distinguishing Guises and Three-dimensional Marks
    4. Trademark Consisting of a Sound
    5. Paragraph 12(1)(a) — Names and Surnames
    6. Paragraph 12(1)(b) — Clearly Descriptive or Deceptively Misdescriptive
    7. Paragraph 12(1)(c) — Name of Goods or Services
    8. Information from Government Departments — Paragraphs 12(1)(b) and (c) and 30(i)
    9. Paragraph 12(1)(d) — Confusion
    10. Paragraph 12(1)(e) — Prohibited Marks
    11. Disclaimers — Section 35
    12. Subsection 12(2) — Distinctiveness
    13. Section 14 — Not Without Distinctive Character
    14. Voluntary Restrictions as to Territory

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 Paragraph 12(1)(a) of the Act — Name or Surname)

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

The statute generally follows the historical principle of common law that all people should be able to identify their goods 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 name or surname connotations, research must be conducted to determine whether it is in fact the name or surname of a living individual. See Gerhard Horn Investments Ltd. v. Registrar of Trade Marks (1983), 73 C.P.R. (2d) 23. An objection under paragraph 12(1)(a) will generally only be considered if there are at least twenty-five entries of the name or the surname located in Canadian telephone directories. However, once the twenty-five entries have been located, the test to determine primary meaning must be applied. 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 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, an objection under paragraph 12(1)(a) will be raised.

Where research discloses that the mark consists of the name or surname of a famous individual, an objection may be raised notwithstanding the existence of less than twenty-five entries in Canadian directories.

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 and if it is listed twenty-five or more times in Canadian telephone directories.

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 possesses meaning as the name of a community, city, town, capital, river, stream or castle, that it is a given name, or that it has trademark significance.

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. The primary meaning of the word is determined pursuant to a test to be applied by examiners.

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

In the event that the surname significance and the other significance of the word are equal when the test is applied, or, if the examiner doubt that the surname significance is more substantial to the hypothetical Canadian than the other significance of the word, then no objection should be made pursuant to paragraph 12(1)(a).

In Elder's Beverages (1975) Ltd. v. Registrar of Trade Marks (1979), 44 C.P.R. (2d) 59, Mr. Justice Cattanach allowed registration of the 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 twenty-five or more listings of that exact combination can be located in a Canadian telephone directories or unless it is the name or surname of a famous individual.

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

Trademark Twenty-five listings 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 comprised of a surname followed by "& Sons", "Brothers", "Inc.", "Co.", etc., are not, as a whole, objectionable under paragraph 12(1)(a) as being primarily merely a surname. 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 at least twenty-five listings of the exact combination can be found in Canadian telephone directories.

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. The trademark as a whole cannot be said to be primarily merely the surname of an individual, following the thinking 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 surname in the pluralized form may or may not be registrable. An objection under paragraph 12(1)(a) may be raised if twenty-five listings of the surname are found in Canadian telephone directories. However, the test to determine primary meaning must be applied. The examiner 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 respond to the word by thinking of it as the surname of a living individual, then an objection under paragraph 12(1)(a) will be raised.

IV.5.10 Surnames in the Possessive Form

A surname in the possessive form may or may not be registrable. An objection under paragraph 12(1) (a) may be raised if twenty-five listings of the surname are found in Canadian telephone directories. However, the test to determine primary meaning must be applied. 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 respond to the word by thinking of it as the surname of a living 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 performing a search of Canadian telephone directories, 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 Twenty-five listings 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 Canada 411 of the surname MÜLLER reveal over 300 example of the surname."

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

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

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

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

In my view, it was open to the respondent to conclude from the fact that FIOR has appeared in directories in Canada as a surname, that the balance of probability is that FIOR is the surname of one or more individuals in Canada who are living. If the appellant had had any doubt as to the correctness of this conclusion, he had ample opportunity to cause the facts to be checked and to place evidence with regard thereto before the respondent or the Court. He has not done that and I can only conclude, as the respondent did, that the balance of probability is that there are individuals in Canada whose surname is Fior.

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 believes that the hypothetical Canadian would respond to the word as the name or surname of an individual who has died more than thirty years ago, the word is registrable. Examiners must also keep in mind how the name or surname is displayed or depicted on the mark. For example, for the hypothetical Canadian, the primary significance of the name Sir John A. MacDonald would be historical. The name 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 if the trademark includes embellishments to the lettering of the name or surname. 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 also the practice notice entitled Place of origin—Paragraph 12(1) (b) of the Trade-marks Act)

A trademark is clearly descriptive of the place of origin if the trademark as a whole is a geographic name and the associated goods or services originate from the location of that geographic name.

A trademark is deceptively misdescriptive of the place of origin if the trademark, or a portion of the trademark, is a geographic name that is not the place of origin of the associated goods or services, and the average Canadian consumer or dealer would be misled into the belief that the associated goods or services had their origin in the location of the geographic name in the trademark.

Geographic name

A trademark is considered to be a geographic name if research shows that the trademark has no other meaning than as a geographic name. In the decision of MC Imports Inc. v. Afod Ltd., 2016 FCA 60, Trudel, J.A, made the following comments at para. 65:

If the wares or services originate in the place referred to by the trade-mark, then the trade-mark is clearly descriptive of place of origin. There is no ambiguity when the trade-mark is the name of the place of origin that would invite further inquiry: referring to the place of origin by its name is the pinnacle of clarity. This is why the perspective of the ordinary consumer of the wares or services is unnecessary. As stated earlier, when filing an application for registration of a trade-mark referring to a geographical place, an applicant should not be allowed to benefit from the consumer's lack of knowledge in geography.

However, if research shows that the trademark has other established meanings, such as a given name, surname, dictionary word, ordinary commercial term, or other recognized meaning from an authoritative source, the examiner must then consider the first impression of the average Canadian consumer or dealer of the applicant's goods or services to determine whether the geographic name is the primary or predominant meaning.

In assessing whether a trademark is a geographic name, examiners may have regard to the names of continents, countries, provinces, states, regions, cities, neighbourhoods, and streets. See Lum v. Dr. Coby Cragg Inc. (2015), 134 C.P.R . (4th) 409 and General Motors of Canada v. Decarie Motors Inc. (2000), 9 C.P.R . (4th) 368.

Examiners will keep in mind that, when depicted, a design may be the equivalent of the geographic name of that place if the average Canadian consumer or dealer of the associated goods or services would recognize the design as depicting that geographical place as a matter of first impression. For example, a trademark consisting of a representation of a map of Italy for use in association with wines may be considered as the equivalent of the geographic name of Italy.

Examiners will also consider that, when sounded, a misspelling or a phonetic equivalent of a geographic name is treated the same as the actual geographic name, e.g., SHECAWGO, KAYBEK.

The adjectival, plural or possessive form of a geographic name is also treated the same as the actual geographic name, e.g. CUVEE DU VATICAN, TORONTOS, CANADA'S NATIONAL LAW FIRM.

Origin of goods or services

If a trademark is determined to be a geographic name, the actual place of origin of the associated goods or services will be ascertained by way of confirmation provided by the applicant. This confirmation can be provided either voluntarily when an application is filed, or in reply to an examiner's written request.

Examiners will request confirmation of the place of origin of the associated goods or services regardless of the address of the applicant.

Goods or services may be found to originate from a geographic location if they are manufactured, produced, grown, assembled, designed, provided or sold there, or if the main component or ingredient is made in that geographic location.

The fact that a geographic name may identify more than one location does not remove a trademark from the ambit of paragraph 12(1)(b) since its primary significance remains a geographic name. For example, the fact that QUEBEC can refer to the city or the province does not remove its primary meaning as a geographic name.

In some cases, the meaning of a word can signify multiple geographic places but the primary meaning is one particular location. For example, the words AMERICA or AMERICAN can refer to the continents of North America and South America but also the United States of America. Despite referring to several different geographical places, to the average Canadian consumer, the meaning of the words AMERICA and AMERICAN is primarily that of the United States of America.

When two geographic terms are combined in the same trademark, the primary significance of the composite may still be geographic if consumers would believe that the goods or services originate from or are provided in both of the locations named in the trademark, e.g., CANADA USA.

Deceptively misdescriptive of the place of origin

If the associated goods or services do not in fact originate from the location of the geographical name in the trademark, the examiner must determine whether the trademark is deceptively misdescriptive of the place of origin. If, as a matter of first impression, the average Canadian consumer or dealer of the applicant's goods or services would be misled into the belief that the associated goods or services had their origin in the geographic place referred to in the trademark, the trademark is considered to be deceptively misdescriptive of the place of origin.

In determining whether a trademark is deceptively misdescriptive of the place of origin, the examiner will consider that the average Canadian is aware that certain cities, states, areas and countries are widely recognized as manufacturing, trading or industrial centres, and a likely source of a wide variety of goods and services, or have established reputations as producers or manufacturers of certain goods or services. For example, Switzerland is known for cheese, chocolate and watches, Britain is known for bone china and finished steel, and Spain, France, Germany, California, Australia, Okanagan, and Niagara are known for wines.

In Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R. (3d) 183, the Court upheld the Registrar's decision that MILAN SHOWERGEL as a proposed trademark for lathering soaps, detergent rinses and like showering material was deceptively misdescriptive of the place of origin of the goods.

Similarly, in T.G. Bright & Co., Ltd. v. Registrar of Trade Marks (1985), 4 C.P.R. (3d) 64, the Court upheld the Registrar's refusal of the application for the trademark CASABLANCA as a proposed mark for wines. The mark was deemed deceptively misdescriptive of the place of origin of the goods. See also the decision in respect of the mark BRIGHTS FRENCH HOUSE (1986), 9 C.P.R. (3d) 239.

Character of goods or services

In some cases, a geographical name forms part of a unitary expression that may clearly describe the character of the associated goods or services, but not necessarily their place of origin. For example, CANADIAN BACON is a term used for back bacon and clearly describes the character of prepared meats. Similarly, SWEDISH MASSAGE is a type of massage that clearly describes the character of massage services.

IV.6.14 Pharmaceuticals

When a trademark is applied-for in association with goods and/or services related to pharmaceuticals, examiners need to conduct research to determine if the mark consists of an International Nonproprietary Name (INN). An INN identifies a pharmaceutical substance or active pharmaceutical ingredient by a unique name that is globally recognized and is public property. To make INN's universally available they are formally placed by the World Health Organization (WHO) in the public domain, hence their designation as "nonproprietary". They can be used without any restriction whatsoever to identify pharmaceutical substances.

IV.6.15 Abbreviations, Acronyms or Initials

(See also the practice notice entitled Descriptiveness and abbreviations, acronyms or initials)

Trademarks consisting of or containing abbreviations, acronyms or initials are 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.

In deciding whether a trademark is clearly descriptive or deceptively misdescriptive, it must be determined what first impression the mark would create upon the everyday user or purchaser of the goods and/or services. See Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25 and Mitel Corporation v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202.

A trademark that consists of or contains an abbreviation, acronym or initial is considered unregistrable pursuant to paragraph 12(1)(b) of the Trade-marks Act if the trademark, when considered in its totality and as a matter of first impression in association with the goods and/or services, is clearly descriptive or deceptively misdescriptive. 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.

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

Trademarks consisting of or containing terms such as: .com, .ca, .fr, .uk & .us are 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 Office considers these terms to mean:

A trademark that consists of or contains one of these terms is considered unregistrable pursuant to paragraph 12(1)(b) of the Trade-marks Act, if the trademark when considered in its totality, as a matter of first impression in association with the goods and/or services is clearly descriptive or deceptively misdescriptive. Therefore, the addition of one of these terms to a clearly descriptive mark will not make it registrable.

In deciding whether a trademark is clearly descriptive or deceptively misdescriptive, it must be determined what first impression the mark would create upon the everyday user or purchaser of the goods and/or services. See Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25 and Mitel Corporation v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202.

IV.6.17 Hashtag (#)

Trademarks, whether sounded, written, or depicted, and containing or consisting of the hash symbol (#), commonly referred to as hashtags, are 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.

A “hashtag” is a form of metadata comprised of a word or phrase prefixed with the hash symbol (#) often used in social-networking sites to identify or facilitate a search for a keyword or topic of interest.

Merriam-Webster dictionary defines the term “hashtag” as:

A word or phrase preceded by the symbol # that classifies or categorizes the accompanying text (such as a tweet).

TERMIUM Plus defines “hashtag” as:

A keyword, a keyword string, or a theme preceded by the pound or number sign and used to index and categorize content.

In deciding whether a trademark is clearly descriptive or deceptively misdescriptive, it must be determined what first impression the trademark would create upon the everyday user or purchaser of the wares and/or services. (Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25 and Mitel Corporation v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202.

A trademark that consists of, or contains, the hash symbol (#) or the word hashtag may be considered unregistrable pursuant to paragraph 12(1)(b) of the Trade-marks Act, if the trademark, as a matter of first impression is considered to be clearly descriptive or deceptively misdescriptive of the character or quality of the goods or services. Therefore, the addition of the # symbol or equivalent word to a clearly descriptive trademark will not render it registrable.

By way of example, the trademark #ITALY for shoes and the retail sale of clothing and shoes, would be deemed to be clearly descriptive or deceptively misdescriptive of the place of origin for the goods and services since the trademark clearly describes that the shoes and clothing are from Italy, a location known for its fashion.

Another example would be the trademark HASHTAG FRESH for fruits and vegetables and the retail sale of food. The word FRESH after the word hashtag is clearly descriptive of the character of the goods and services. Therefore, the trademark as a whole is deemed to be clearly descriptive since the trademark clearly describes that the fruits and vegetables are fresh.….

When considering the hash symbol (#) or the word hashtag, examiners will also consider the overall impression and placement. If the symbol or word immediately precedes a number (YOUR #1 CHOICE, #19 RALPH) or is being used as a pound or number symbol (THE DOG#, PICK UR #) the symbol will not be construed as being a “hashtag”.

Therefore, each trademark must be examined based on its own merit and trademarks consisting of, or containing, the hash symbol or word ”hashtag”, will always be examined on a case by case basis.

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

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

The name of the goods or services in any language is not a registrable trademark for the obvious reason that it could not function to distinguish goods or services of one person from identical goods or services produced by other persons.

IV.7.2 Interpreting and Applying Provisions

When examiners are faced with a trademark which comprises a word or words in a language other than English or French, they must request a translation of the word or words from the applicant, pursuant to Rule 29(a) of the Trade-marks Regulations.

Where the trademark comprises matter expressed in characters other than Latin characters or in numerals other than Arabic or Roman numerals, examiners must request a transliteration of the matter into Latin characters and Arabic numerals (in order to assess how the mark is sounded) pursuant to Rule 29(b) of the Trade-marks Regulations.

If a trademark is a compound word written as one word, the applicant may not be required to provide a translation or a transliteration of any portion comprising the mark. However, if a portion of the mark stands out as separate, such as having a different print, a different colour claim, etc, the applicant will be requested to provide a translation into English or French of any words in any other language contained in the trademark. The applicant may also have to provide a transliteration of any matter expressed in characters other than Latin characters or in numerals other than Arabic or Roman numerals contained in the trademark.

The translation and transliteration of the word or words will be included in the particulars of the application upon its advertisement in the Trademarks Journal, along with the statement that the translation and transliteration of the word or words has been provided by the applicant.

If the trademark or translation of the trademark is the name of the goods or services, then an objection must be raised pursuant to the provisions of paragraph 12(1)(c) of the Trade-marks Act.

If the offending matter is a portion of the trademark and not essential to the performance of the mark, it may be removed entirely by submitting a revised application or revised drawings, providing this change is not contrary to Rule 31(b) of the Trade-marks Regulations.

A trademark which is the name of the goods or services cannot become registrable on a showing of acquired distinctiveness.

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

It is important to note that the registration of a mark under the Trade-marks Act does not imply that its use will necessarily comply with the requirements of other federal statutes. The use of a registered trademark or a coined trade or brand name may, depending on what is implied or expressed, violate federal law.

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

Examiners must also consider the following legislation in assessing compliance with paragraph 30(i), i.e., the requirement of "a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the goods or services described in the application."

IV.8.1.1 The Bank Act

Subsection 983(2.1) of the Bank Act reads as follows:

983. (2.1) Subject to the regulations and subsections (4) to (5.1), (6) and (12), every person, other than a bank, who uses the word "bank", "banker" or "banking" to indicate or describe a business in Canada or any part of a business in Canada, without being authorized to do so by this Act or any other Act of Parliament, is guilty of an offence.

If the applicant's name does not appear in Schedule I, II or III (these schedules can be found on the Canadian Bankers Association website), an objection under paragraph 30(i) must be raised when the term "bank", "banker" or "banking" appears:

  1. in the trademark itself when the goods or services relate to financial services
  2. in the statement of goods or services

This objection will not be withdrawn if the applicant merely reiterates that it is satisfied that it is entitled to use the mark in association with the goods or services. The applicant must provide a written statement that the applicant or its licensee is authorized to use the term "bank", "banker" or "banking", under the provisions of the Bank Act or another Act of Parliament.

If the application is based on proposed use, the Office will accept a statement that the applicant is authorized or will be authorized to use the term under the Bank Act or any other Act of Parliament.

Subsections 983(4) to (5.1), (6) and (12) provide for exceptions where the terms "bank", "banker" or "banking" may be used without the authorization of the Bank Act. Subsection 983(13) provides interpretation of the terms "bank", "banker" or "banking". An objection raised pursuant to paragraph 30(i) may be withdrawn once the applicant advises the Office that it complies with one of these subsections. In addition, an order issued by the Minister of Finance pursuant to the Bank Act permitting a foreign bank to establish a bank in Canada is also acceptable:

Section 983

Permitted use

(4) No person commits an offence under any of subsections (2) to (2.3) if the activity referred to in that subsection is done
(a) in a description of the corporate relationship between a bank and an entity controlled by the bank;
(b) subject to the regulations, in a description of a corporate relationship between a bank and an entity affiliated with the  bank;
(b.1) in a description of the corporate relationship between a bank holding company and an entity controlled by the bank holding company;
(c) in an advertisement in Canada by or on behalf of a foreign bank in respect of its facilities outside Canada;
(d) in the identification of representative offices of a foreign bank in Canada;
(e) in relation to the business in Canada of an authorized foreign bank;
(f) in a description of the corporate relationship between a bank or a bank holding company and a foreign bank that controls the bank or the bank holding company;
(f.1) in a description of the corporate relationship between a bank or a bank holding company and an entity that is associated with a foreign bank and that controls the bank or the bank holding company;
(g) subject to the regulations, in a description of the corporate relationship between a non-bank affiliate of a foreign bank, within the meaning of subsection 507(1), and a foreign bank that controls the non-bank affiliate, if the non-bank affiliate is not a bank holding company or an entity that is controlled by a bank holding company;
(h) subject to the regulations, in a description of the corporate relationship between a non-bank affiliate of a foreign bank, within the meaning of subsection 507(1), and an entity that is associated with a foreign bank that controls the non-bank affiliate, if
(i) the non-bank affiliate is not a bank holding company or an entity that is controlled by a bank holding company, and
(ii) the entity is not a bank, a bank holding company, a foreign bank or an entity controlled by a bank or a bank holding company;
(i) in the identification of a body corporate that was a non-bank affiliate of a foreign bank within the meaning of subsection 303(1) of the Bank Act, being chapter B-1 of the Revised Statutes of Canada, 1985, at any time before June 1, 1981;
(j) in the identification of a Canadian financial institution that
(i) was controlled by a bank that was a subsidiary of a foreign bank before June 15, 1997 but that has ceased to be so controlled,
(ii) is controlled by a foreign bank that, before June 15, 1997, controlled the subsidiary, and
(iii) used, before June 15, 1997, the word "bank", "banker" or "banking" to identify itself; or
(k) in the identification of a bank holding company.

Permitted use

(4.1) No person commits an offence under any of subsections (2.01) to (2.04) if the activity referred to in that subsection is done
(a) in relation to a prescribed use;
(b) under prescribed circumstances; or
(c) in accordance with a prescribed approval and any terms and conditions that the Minister may impose.

Permitted use

(5) No subsidiary of a bank commits an offence by reason only that it uses the name of the bank of which it is a subsidiary in its corporate name or a name under which it carries on business or by reason only that it uses any identifying mark of that bank in carrying on its business.

Permitted use

(5.1) No  person commits an offence under subsections (2) to (2.1) if the activity referred to in that subsection is in relation to a business that is not engaged in financial activities, unless the business is carried out by a prescribed entity.

Permitted use

(6) No financial institution that was controlled by a bank on June 25, 1999 and that had a name that included the word "bank", "banker" or "banking" on that day commits an offence by reason only that it uses that word in its corporate name or in a name under which it carries on business if the financial institution is a subsidiary of a bank holding company that controls the bank.

Permitted use — consent

(12) No person commits an offence under any of subsections (2) to (3) if the activity referred to in that subsection has been approved by the Superintendent and is in accordance with any terms and conditions that the Superintendent may impose and, if the activity involves the use of the name or any identifying mark of a bank, a bank holding company or a foreign bank, the bank, bank holding company or foreign bank has consented to the use.

Words "bank", "banker" or "banking"

(13) For the purposes of this section, the word "bank", "banker" or "banking" includes
(a) any of those words in any language; and
(b) any word or words, in any language, that are equivalent to any of those words.

IV.8.1.2 The Canada Post Corporation Act

The Canada Post Corporation Act includes the following provisions:

14. (1) Subject to section 15, the Corporation has the sole and exclusive privilege of collecting, transmitting and delivering letters to the addressee thereof within Canada.

57. Every person commits an offence who, without the consent of the Corporation, engages in the business of selling postage stamps to the public for the purpose of payment of postage.

58. (1) Every person commits an offence who, without the written consent of the Corporation, places or permits or causes to be placed or to remain on his premises the words "post office" or any other word or mark suggesting that such premises are a post office or a place for the receipt of letters.

Where a trademark has been applied for registration in association with:

Examiners should consider an objection pursuant to paragraph 30(i) of the Trade-marks Act on the basis that the applicant cannot be satisfied that he is entitled to use the trademark in Canada in association with the goods or services described in the application since such use is prohibited by section 14, 57 or 58 of the Canada Post Corporation Act.

The objection can be overcome upon receipt of written confirmation from the applicant that it has been authorized by the Canada Post Corporation to use the trademark in association with the applied for goods or services.

IV.8.1.3 Other Acts

Other Acts to be considered in assessing compliance with paragraph 30(i) include:

  1. The Canada Agricultural Products Act and the Meat Inspection Act prohibit the use of grade names and the agricultural product legends unless the applicant is authorized to so use the aforementioned, under the authority of the Canada Agricultural Products Act and/or the Meat Inspection Act.
  2. An Act respecting the Royal Canadian Legion
  3. The Act to incorporate The Canadian Council of the Girl Guides Association
  4. The Act to incorporate The Canadian General Council of The Boy Scouts Association
  5. An Act for the protection of the Dionne Quintuplets prohibits the registration of the words "Quins", "Quints", "Quintuplets" or "Cinq Jumelles" per se. This prohibition does not extend to marks that contain these words along with other reading matter or design elements.
  6. An Act to incorporate Canadian Nurses' Association
  7. The Animal Pedigree Act
  8. The Textile Labelling Act prohibits any false or misleading representations relating to a textile fibre product, whether by label, advertising or otherwise.
  9. The Consumer Packaging and Labelling Act prohibits false or misleading representations on the label of prepackaged products.
  10. The Competition Act prohibits false or misleading representations to promote a business interest.
  11. The Food and Drugs Act prohibits the advertising, labelling or selling of any food in a manner that is false or misleading or likely to create an erroneous impression.
  12. The Precious Metals Marking Act prohibits the use of false, misleading or incorrect marks in relation to precious metal articles.

Examiners must also be aware of generic names for seed varieties. Any trademark which consists of the name of a registered seed variety applied for use in association with seeds would be contrary to paragraph 12(1)(b). The list of registered seed variety names is maintained by the Canadian Food Inspection Agency and may be found on their Web site.

IV.8.2 Precious Metals

The Trademarks Office cooperates with the Precious Metals Marking Section of the Competition Bureau of Innovation, Science and Economic DevelopmentCanada in attempting to reduce the chances of marks being registered which might be misconstrued by the trade as representing quality marks. Examiners must decipher abbreviations and the like and determine their relation to the goods or services in order to make a decision on descriptiveness.

When a trademark includes terms, abbreviations or numerals for precious metals from the list provided by the Precious Metals Marking Section, examiners must seek confirmation that the goods contain or are made with the particular component.

If this is not the case, then the mark as a whole is deceptively misdescriptive of the character of the goods and is therefore unregistrable pursuant to the provisions of paragraph 12(1)(b) of the Trade-marks Act.

Where the trademark is used in association with an article made of a precious metal, that article must be stamped with a trademark and an application for registration received in the Trademarks Office before it will be accepted for distribution in Canada. For example, a consignment of jewellery arriving in Canada would not be released from Customs until these two requirements have been satisfied. As well, the Precious Metals Marking Section keeps track of marks which are registered by the Trademarks Office for use with articles made of precious stones and metals.

The Precious Metals Marking Section has provided the following list of quality marks which, if applied for as trademarks for precious metals and/or articles made from precious metals, would be considered contrary to paragraph 12(1)(b) of the Trade-marks Act.

Marking For Definition
HGE abbrev. for "heavy gold electroplating"
GF "gold filled"
RGP "rolled gold plate"
GEP "gold electroplate"
R.P. "rolled plate"
S.F. "silver filled"
S.P. "silver plated"
E.P. "silver plated"
ST "sterling silver"
STER "sterling or sterling silver"
800 "below min. quality imported for silver"
835 "below min. quality imported for silver"
925 num. equiv. for "silver or sterling silver min. quality"
333 below min. for "8 karat import for gold"
375 "9 karat gold"
416 "10 karat gold"
4167 "10 karat gold"
583 "14 karat gold"
5833 "14 karat gold"
585 "14 karat gold"
750 "18 karat gold"
800 "19.2 karat gold imported from Portugal"
916 "22 karat gold imported"
9167 "22 karat gold imported"
9K to 24K incl. "karat designations acceptable for gold"
Articles Other Than Plated Articles
Gold

"karat", "carat", "Karat", "Carat", "Kt.", "Ct.", "K", "C" or a decimal designation may be used to express the quality of gold of an article having a minimum quality of 9K or higher.

Gold articles having a quality of 10K, 14K, 18K may alternatively be marked as .416, .583, .750, respectively.

Silver

"silver", "sterling silver", "sterling", "argent", "argent sterling" or any abbreviations thereof (e.g., "ster." or "STG") are quality marks provided for any article which contains at least 925 parts pure silver in 1,000 parts by weight.

The use of ".925" for "silver" of 925 parts pure silver per 1,000 parts by weight is also provided for.

Platinum

"platinum", "plat.", or "platine" are quality marks provided for any article which contains at least 95 percent platinum or at least 95 percent an alloy of platinum and iridium or ruthenium.

Palladium

"palladium" or "pall." are quality marks provided for any article which contains 95 percent palladium. This quality mark may also be used for an alloy of at least 90 percent palladium only when accompanied with an additional 5 percent of any combination of the following prescribed metals, namely: platinum, iridium, ruthenium, rhodium, osmium or gold.

Plated Articles

This section does not cover the requirement for plated watchcases, spectacle frames, flatware and hollow ware which are discussed later in this section.

Note: The abbreviation "S.P." is taken to mean silver electro-plated and is an acceptable quality mark due to long-standing trade use.

Plated Pocket Watch Cases and Plated Bracelet Watch Cases
Plated Spectacle Frames
Plated Flatware
Plated Hollow Ware

IV.8.3 List of Grade Names and Agricultural Product Legends

The operation of certain sections of the Canada Agricultural Products Act and the Meat Inspection Act, together with paragraph 30(i) of the Trade­marks Act, proscribe the Registrar from accepting trademark applications which contain prohibited matter. Therefore, where a trademark contains such prohibited matter, an objection under paragraph 30(i) must be raised.

The following are national trademarks under the Canada Agricultural Products Act and the Meat Inspection Act.

Processed Poultry Products — Poultry Stamps

An image of a poultry stamp consisting of a maple leaf on which is printed the word CANADA above the letter A

An image of a poultry stamp consisting of a maple leaf on which is printed the word CANADA above the word UTILITY above the word UTILITÉ

An image of a poultry stamp consisting of a maple leaf on which is printed the word CANADA above the letter C

Processed Egg Regulations — Inspection Legend

An image of an processed egg inspection stamp consisting of a maple leaf on which is printed the word CANADA above the number 210

Egg Regulations — Stamps

An image of an egg stamp consisting of a maple leaf on which is printed the word CANADA above the letter A in outline

An image of an egg stamp consisting of a maple leaf on which is printed the word CANADA above the letter B in outline

An image consisting of the word CANADA above the letter C

An image consisting of the words CANADA NEST RUN / CANADA OEUFS TOUT VENANT

An image consisting of the words REJECTS / REJETÉS

Processed Products Regulations — Stamps

An image consisting of the words CANADA FANCY

An image consisting of the words CANADA CHOICE

An image consisting of the words CANADA STANDARD

An image consisting of the words CANADA A

An image consisting of the words CANADA B

An image consisting of the words CANADA C

An image consisting of the words FANCY GRADE OR GRADE A

An image consisting of the words CHOICE GRADE OR GRADE B

An image consisting of the words STANDARD GRADE OR GRADE C

Dairy Products Regulations — Stamps

An image of an dairy product stamp consisting of a maple leaf on which is printed the word CANADA above the number 1 in outline

An image of an dairy product stamp consisting of a maple leaf on which is printed the word CANADA above the number 2 in outline

An image of an dairy product stamp consisting of a maple leaf on which is printed the word CANADA above the number 3 in outline

Honey Regulations
Maple Products Regulations
Fresh Fruit and Vegetable Regulations
Canada Produce Legend

An image of a produce stamp consisting of a maple leaf on which is printed the word AGRICULTURE above the word CANADA above the numbers 00 and the letter A at the top, B on the right, C on the bottom and D on the left

Meat Inspection Regulations — Meat Inspection Legend

Note: Only the Meat Inspection Legend is declared as a national trademark under the Meat Inspection Act.

An image of a meat inspection stamp consisting of concentric circles inside which is printed the word CANADA above a crown design above the numbers 00

An image of a meat inspection stamp consisting of a circle inside which is printed the word CANADA above a crown design above the numbers 00

An image of a meat inspection stamp consisting of an oval inside which is printed the word CANADA above the numbers 00

Livestock Carcass Grading Regulations
Beef Grades
  • Canada A
  • Canada AA
  • Canada AAA
  • Canada B1
  • Canada B2
  • Canada B3
  • Canada B4
  • Canada D1
  • Canada D2
  • Canada D3
  • Canada D4
  • Canada E
Beef Grade Stamp

An image of a beef grade stamp consisting of a maple leaf on which is printed the word CANADA above the letters AAA above the number 210

Beef Yield Stamp

An image of a beef yield stamp consisting of an inverted rounded-corner triangle inside which is printed the word CANADA above the number 1 above the number 301

Veal Grades
  • Canada A1
  • Canada A2
  • Canada A3
  • Canada A4
  • Canada B1
  • Canada B2
  • Canada B3
  • Canada B4
  • Canada C1
  • Canada C2
Veal Grade Stamp

Veal Grade Stamp

Hog Grades (Yield Class — No. 1-7)
Bison Grades
  • Canada A1
  • Canada A2
  • Canada A3
  • Canada B1
  • Canada B2
  • Canada C1
  • Canada C2
  • Canada D1
  • Canada D2
Bison Grade Stamp

An image of a Bison grade stamp consisting of a double-lined rectangle inside which is printed the words GRADE NAME IN BLOCK CAPITALS in the upper left corner and GRADER’S CODE in the lower right corner

IV.9 Paragraph 12(1)(d) — Confusion

See section III of this Manual for a discussion of the issue of confusion in light of the provisions of paragraph 12(1)(d) of the Trade-marks Act.

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

Marks which may not be adopted as trademarks are set down in subsection 9(1) and section 10 of the Trade-marks Act. Examiners must remember that the prohibition against registration applies both to marks that consist of, crests, emblems, etc. and to marks so nearly resembling them as to be likely to be mistaken for them.

In view of the principles laid out in Olympic Association v. Allied Corp. (1989), 28 C.P.R. (3d) 161 (FCA), the Registrar considers that the relevant date for assessing registrability pursuant to paragraph 12(1)(e) of the Act is the date of the decision to refuse the applicant’s registration.

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

A mark is not registrable if it consists of, or so nearly resembles as to be likely to be mistaken for:

  1. the Royal Arms, Crest or Standard;
  2. the arms or crest of any member of the Royal Family;
  3. the standard, arms or crest of His Excellency the Governor General

In T.S. Simms & Co. Ltd. v. Commissioner of Patents, [1938] Ex. C.R. 326, a representation of a crown closely resembling the royal crown included in the Royal Crest was refused registration on the basis that it was prohibited by section 14 of the Unfair Competition Act, corresponding to section 9 of the Trade-marks Act. The learned trial judge, Angers J. stated the following:

I do not believe that section 14 forbids the use of a crown in general; in my opinion, however, it does forbid the use of the crown forming part of the Royal Arms or crest or of the arms or crest of a member of the Royal Family or of a crown so nearly resembling them that it may lead to mistake.

IV.10.2 Paragraph 9(1)(d)

An objection to registration will be raised in respect of any mark that suggests an association with a royal, vice-regal or governmental authority as set out in paragraph 9(1)(d).

However, a word which alludes in a general way to royalty, a crown, etc. is registrable material. For example, in A.B. Statens Skogsindustrier v. Registrar of Trade Marks (1964), 46 C.P.R. 96, the mark ROYAL BOARD THREE CROWNS with a design was held not to offend paragraph 9(1)(d) of the Trade-marks Act.

However, a mark in which such a word is used in a manner to indicate royal or governmental patronage must be objected to pursuant to paragraph 9(1)(d).

In Canada Post Corp. v. MacLean Hunter Ltd.(1994), 55 C.P.R. (3d) 559, the applicant applied to register the trademark LASER POST based on use for personalized direct-mail services and personalized direct-mail goods. The words LASER and POST were disclaimed.

The opponent alleged that the trademark was not registrable pursuant to paragraph 12(1)(e) of the Trade-marks Act because it was likely to lead to the belief that the goods and services in association with which it was used had received or were produced, sold or performed under governmental patronage, approval or authority contrary to paragraph 9(1)(d) of the Trade-marks Act.

The application was refused because it was concluded that there was a significant association in the public mind between the word "post" and the opponent when it is used for mail-related goods and services. Further, LASER POST customers would assume that Canada Post had approved, authorized, sponsored or licensed the applicant's use of the trademark LASER POST.

Note: Paragraph 9(1)(d) does not extend to foreign governments, in view of the decision in Institut National des Appellations d'Origine v. Chock Full O'Nuts Corp. (2000) 9 C.P.R. (4th) 394.

IV.10.3 Paragraph 9(1)(e)

Examples of arms, crests or flags for which public notice has been given of their adoption and use by a municipal or government authority and which are unacceptable matter for trademarks are as follows:

  1. The Coat-of-Arms of Canada, which was subject of a notice under paragraph 9(1)(e) in the Trademarks Journal of April 13, 1955.
  2. The Canadian Red Ensign with the shield of the Coat-of-Arms of Canada in the flag, which was also subject of a notice under paragraph 9(1)(e) in the Trademarks Journal of April 13, 1955.
  3. The Canadian Flag

On April 14, 1965, and pursuant to the provisions of paragraph 9(1)(e), public notice was given in the Trademarks Journal of the adoption and use of the Canadian Flag. Such flag consists of an eleven-point maple leaf in a white square with red bars on either side, of the proportion two by length and one by width. Since the national flag of Canada is a prohibited mark, examiners will raise an objection pursuant to paragraph 12(1)(e) of the Trade-marks Act for any application for a trademark consisting of, or so nearly resembling as to be likely to be mistaken for the Canadian flag.

Notwithstanding the above, on September 2, 1965, Order-in-Council PC 1965-1623, was passed entitled Purposes and Conditions of Use By the Public of Certain Canadian Symbols and Emblems, in which consent was given in section 4 to use the maple leaf on a trademark or in a design incorporating the particular eleven-point maple leaf that forms part of the national flag (see prohibited mark 970441 published pursuant to paragraph 9(1)(i) of the Trade-marks Act). Such consent was granted on the condition that:

  1. the use of the design or trademark conforms to good taste;
  2. an applicant for the registration of such design or trademark disclaims, in the application, the right to the exclusive use of the maple leaf; and
  3. the owner of such design or trademark will not attempt to prevent anyone else from using the maple leaf.

The consent pertains to the use of the eleven-point maple leaf as part of a composite mark; there must be some registrable portion of the composite mark other than the eleven-point maple leaf. The composite mark applied for will be examined in the usual manner pursuant to section 12.

In cases where a trademark includes a representation of the Canadian flag, both a consent and a disclaimer are required. Consent may be requested at the following address:

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

The Government of Canada or the government of a province or a municipal corporation may, after adoption and use of a coat of arms, crest or flag, request the Registrar to give public notice of such adoption and use. The written request for public notice should specify that it is made pursuant to the provisions of paragraph 9(1)(e) of the Trade-marks Act.

Public notice is considered to be given by the Registrar when the particulars relative to the protected matter are advertised in the Trademarks Journal. Such notices appear in a special section of the Journal under the heading "Notices under section 9 of the Trade-marks Act."

The Registrar must give public notice when requested to do so under paragraph 9(1)(e) of the Trade-marks Act. As Cattanach J. said in Insurance Corporation of British Columbia v. Registrar of Trade Marks (1979), 44 C.P.R. (2d) 1 at page 12:

So, too, the requests contemplated in s. 9(1)(e) and the remaining sources of request in s. 9(1)(n) are made by the Government of Canada, of a Province or by a municipality and by a university or public authority, originate from like, but lesser, high authority and, despite polite usage of the word "request", are likewise mandatory in nature.

And further:

…I conclude that there is no discretion in the Registrar to refuse to give public notice when requested to do so under s. 9(1)(e) and s. 9(1)(n) regardless of the body mentioned in either paragraph which makes the request.

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

The prohibitions against adoption for use as a trademark of any of the emblems or signs as set down in paragraphs 9(1)(f), (g), (g.1) and (h) are very specific and therefore do not require additional commentary, except for a practice established with regard to the emblem of the Red Cross:

An objection pursuant to paragraphs 9(1)(f) and 12(1)(e) will be raised when an applied for trademark as a whole (and not only the cross element) consists of or so nearly resembles as to be likely mistaken for the representation of the Red Cross. If additional elements, such as words, design features, etc., are added to the mark, the trademark as a whole may not consist of, or so nearly resemble as to be mistaken for, the Red Cross. If the applicant's mark is still likely to be mistaken for the Red Cross, an objection should be raised. Note that if a colour other than red is claimed then the mark would not be considered to contravene the provisions of paragraph 9(1)(f) if the Trade-marks Act.

A composite mark including the Red Cross may be registrable with consent, as outlined in paragraph 9(2)(a).

A similar approach may be taken with respect to paragraphs 9(1)(g), (g.1) and (h).

IV.10.4.1 Paragraph 9(1)(h.1)

This paragraph prohibits the adoption of any mark consisting of, or so nearly resembling as to be likely to be mistaken for, the international distinctive sign of civil defence (equilateral blue triangle on an orange ground) referred to in Article 66, paragraph 4 of Schedule V to the Geneva Conventions Act.

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

Under Article 6ter of the Paris Convention, the Registrar may receive a communication from the International Bureau of the World Intellectual Property Organization advising of a request for protection in respect of a territorial or civic flag; a national, territorial or civic arm, crest or emblem; or an official sign or hallmark indicating control or warranty.

Public notice of the communication from the International Bureau is given by way of advertisement in the Trademarks Journal. The information that is published in the Trademarks Journal is also entered in the database which enables both the public and examiners to find any prohibited marks during a search.

IV.10.5.1 Paragraph 9(1)(i.2)

The prohibition against adoption for use as a trademark of any national flag of a country of the Union does not require a communication from the International Bureau and public notice by the Registrar. However, if a communication is received from the International Bureau in respect of a national flag, it will be treated in the same way as communications referred to above under the heading "Paragraphs 9(1)(i) and 9(1)(i.1)".

IV.10.5.2 Paragraph 9(1)(i.3)

Under Article 6ter of the Paris Convention, the Registrar may receive a communication from the International Bureau of the World Intellectual Property Organization advising of a request for protection in respect of any armorial bearing, flag or other emblem, or the name or any abbreviation of the name, of an international intergovernmental organization.

Public notice is given by way of advertisement in the Trademarks Journal. The information that is published in the Trademarks Journal is also entered in the database which enables both the public and examiners to find any prohibited marks during a search.

IV.10.6 Paragraph 9(1)(j)

This paragraph prohibits the adoption of any mark consisting of, or so nearly resembling as to be likely to be mistaken for, any scandalous, obscene or immoral word or device.

Although the Trademarks Office is not aware of any interpretation of this section by the courts in Canada, similar provisions in the trademark acts of the United States and Great Britain have been the subject of consideration. In examining a mark in respect of paragraph 9(1)(j) examiners may be guided by the following:

A mark consisting of the representation of a topless dancer combined with a second representation of the torso of a topless dancer was found contrary to paragraph 9(1)(j) and was refused by the Registrar pursuant to paragraph 12(1)(e). (See application No. 409,882)

In order to determine if a word or design is scandalous, obscene or immoral, examiners must determine whether the trademark would offend the feelings or sensibilities of a not insignificant segment of the public.

In Oomphies Trade Mark (1946), 64 R.P.C. 27, Mr. Justice Evershed overruled the Registrar's decision to refuse to register the non-invented word OOMPHIES for shoes on the admitted ground that "oomph" was American slang for sex appeal. Evershed J., while overruling the Registrar, made it quite clear that he had no disagreement with the principles upon which the Registrar acted, stating at page 30:

I must wholeheartedly accept the proposition that it is the duty of the Registrar (and it is my hope that he will always fearlessly exercise it) to consider not merely the general taste of the time, but also the susceptibilities of persons, by no means few in number, who still may be regarded as old fashioned and, if he is of the opinion that the feelings or susceptibilities of such people will be offended, he will properly consider refusal of the registration.

Additionally, Miss Universe, Inc. v. Bohna (1991), 36 C.P.R. (3d) 76 (T.M.O.B.) [affirmed (1992) 43 C.P.R. (3d) 462 (F.C), and reversed for confusion (1994), 58 C.P.R. (3d) 381 (F.C.A)] states at 82 of the decision:

I must say that at present we live in what is commonly called a "permissive age" where previously accepted moral standards are undergoing change. The difficulty is to determine what are the acceptable standards today and what would still be considered immoral, scandalous, or obscene by some people by no means few in number.

Although it does not specifically say "not insignificant", the wording "by no means few in number" connotes the same idea.

In another instance, the refusal to register a mark was based on the argument that the mark would offend people's religious sensibilities. In Hallelujah Trade Mark [1976] R.P.C. 605, the word HALLELUJAH was refused registration in respect of articles of clothing for women on the grounds that the word had an overwhelming religious significance and, as applied to the goods, would offend accepted mores of the time.

The Office is of the view that trademarks containing any religious reference are generally not considered to be proper subject matter for obtaining a trademark registration.

IV.10.7 Paragraph 9(1)(k)

Paragraph 9(1)(k) of the Trade-marks Act reads as follows:

(1) No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,

(k) any matter that may falsely suggest a connection with any living individual;

A trademark that consists of or so nearly resembles as to be likely to be mistaken for any matter that may falsely suggest a connection with any living individual is unregistrable pursuant to the provisions of paragraph 12(1)(e) of the Trade-marks Act.

Falsely suggest a connection

Since the wording of paragraph 9(1)(k) lends itself to a broad interpretation, examiners must pay particular attention to any way in which a mark might “falsely suggest a connection with any living individual”. Examiners must be aware of any details such as a nickname, caricature, original element of clothing or some other characteristic which the public associates with the living individual and which cannot be registered as a trademark if it falsely suggests a connection with that individual. See Carson v. Reynolds (1980), 49 C.P.R. (2d) 57. The living individual need not be famous.

It must be considered whether the average consumer of the applicant’s goods or services would be misled by the use of the trademark into assuming that the individual has sponsored, approved or supported the applicant’s goods or services or that the applicant’s goods or services are a “spin-off” from the individual’s activities. See Jean Cacharel, S.A. v. Reitman's (Canada) Ltd. (1984), 3 C.P.R. 459 and Daniel Hecter v. SA Daniel D. Société Anonyme (1990), 31 C.P.R. (3d) 61.

The purpose of raising an objection pursuant to paragraph 9(1)(k) of the Trade-marks Act is not to deny registration of the individual’s name or any matter related to the individual but to ensure that there is no appropriation or exploitation of the name or other matter for commercial purposes without permission from the individual. As Justice Montgomery stated in Baron Philippe de Rothschild, S.A. v. La Casa de Habana Inc. (1987),19 C.P.R. (3d) 114, “One cannot commercially exploit another's name or likeness without his permission. In my view the tort of appropriation of personality has been committed and must be enjoined.”

If the living individual is also the applicant, then there is no false connection and the registrability of the trademark is not contrary to paragraph 9(1)(k). However, if the applicant is not the living individual, then there is a false connection and consent as described in paragraph 9(2)(a) will be required to overcome the objection. Once provided, the statement “Consent from (the individual) is of record” will be included in the particulars of the application upon its advertisement in the Trade-marks Journal.

In view of Jack Black L.L.C. v. Canada (Attorney General) (2014), 127 C.P.R. (4th) 192, and in cases where consent to the use and registration of the trademark pursuant to paragraph 9(2)(a) of the Act has not been provided, the Registrar may consider arguments based on evidence filed by way of affidavit or statutory declaration that establishes that no connection with the living individual was ever intended by the applicant, that there have been no complaints from the living individual concerning the use of the trademark in Canada, and that there have been no instances of the goods and services being sold or provided on the mistaken belief that they are in any way connected to the living individual.

Note: If the living individual is also famous, an objection pursuant to paragraph 12(1)(a) of the Trade-marks Act may also be raised in accordance with the practice noticed entitled Paragraph 12(1)(a) of the Act – Name or Surname.

Significant public reputation

When assessing registrability of the name of any living individual or any matter which would falsely suggest a connection with any living individual, examiners must determine if the living individual has “significant public reputation”. A living individual is considered to have “significant public reputation” in Canada when a significant number of Canadians know of the particular individual with whom the trademark falsely suggests a connection. See Carson, supra; Bousquet v. Barmish Inc. (1991), 37 C.P.R. (3d) 516, affirmed (1993), 46 C.P.R. (3d) 510; and Jack Black L.L.C., supra.

In the context of examination under paragraph 9(1)(k) of the Act, and following the principles laid out in Bousquet, supra, examiners will research information that is available to the general public in Canada to determine if there is evidence that the individual has “significant public reputation” and that a significant number of Canadians would be led to believe that the goods or services associated with the applicant’s trademark are connected to the living individual. See Jack Black L.L.C., supra. In conducting research, consideration may be given to websites referring to the living individual and evidence regarding the number of Canadians who have accessed the websites as well as articles found in major Canadian daily newspapers with substantial circulation. See Villeneuve v. Mazsport Garment Manufacturing Inc. (2005), 50 C.P.R. (4th) 127 and Waltrip v. Boogiddy Boogiddy Racing Inc, (2007), 64 C.P.R. (4th) 357.

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

Paragraph 9(1)(k) of the Trade-marks Act may apply to a trademark consisting of the name of a musical band or featuring any matter that may falsely suggest a connection with a musical band.

The word “band” is defined in the Canadian Oxford Dictionary as “a group of musicians playing jazz, rock, or pop music”.

Subsection 33(2) of the Interpretation Act reads as follows:

Words in the singular include the plural, and words in the plural include the singular.

Based on the Interpretation Act, paragraph 9(1)(k) of the Trade-marks Act applies equally to a living individual and to living individuals. See Baron Philippe de Rothschild, S.A, supra.

Where a trademark consists of the name of a musical band or any matter which would falsely suggest a connection with a musical band, an objection may be raised pursuant to paragraph 9(1)(k) of the Trade-marks Act if it is determined through research that the evidence establishes that the musical band has “significant public reputation” in Canada.

An objection raised pursuant to paragraph 9(1)(k) of the Trade-marks Act can be overcome with a letter of consent as described in paragraph 9(2)(a). It can be provided by the members of the band, one member of the band if he or she is entitled to give consent, or by someone authorized to do so on their behalf (their manager, record company, etc.). The matter of determining who is authorized to provide consent on behalf of the band will rest with the applicant. Once provided, the statement “Consent from (the band) is of record” will be included in the particulars of the application upon its advertisement in the Trade-marks Journal.

IV.10.8 Paragraph 9(1)(l)

Paragraph 9(1)(l) of the Trade-marks Act prohibits the adoption of any mark consisting of, or so nearly resembling as to be likely to be mistaken for, the portrait or signature of any individual who is living or has died within the preceding thirty years.

This prohibition may be overcome pursuant to paragraph 9(2)(a) of the Trade-marks Act with a letter of consent from the individual whose portrait or signature comprises the mark in whole or in part. The statement "Consent from (the individual) is of record" will be included in the particulars of the application upon its advertisement in the Trademarks Journal.

A letter of consent is not required if the individual is the applicant, or if the trademark is in whole or in part a created signature. However, a statement, by the applicant, to that effect would be required and entered in Intrepid and published in the Trademarks Journal.

A letter of consent from an authorized person, such as the executor of the individual's estate, is required if the individual has died within the preceding thirty years.

Note: A trademark which is in whole or in part a portrait or signature may also be prohibited pursuant to the provisions of paragraph 9(1)(k) of the Trade-marks Act if the mark falsely suggests a connection with a living individual. (This prohibition may also be overcome pursuant to paragraph 9(2)(a) of the Trade-marks Act with a letter of consent from the living individual.)

Examiners will not consider the registrability of a signature pursuant to the provisions of paragraph 12(1)(a) of the Trade-marks Act. The Trademarks Office considers a signature of an individual to be inherently distinctive since it is unique to that individual. Therefore, a signature is considered to be registrable pursuant to paragraph 12(1)(a) even if the wording is considered primarily merely the name or the surname of an individual who is living or who has died within the preceding thirty years.

IV.10.9 Paragraph 9(1)(m)

This paragraph prohibits the adoption of any mark consisting of, or so nearly resembling as to be likely to be mistaken for, the words "United Nations" or the official seal or emblem of the United Nations.

IV.10.10 Paragraph 9(1)(n)

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

These subparagraphs provide for the protection of any badges, crests, emblems or marks of her Majesty's Forces or those of any university and which become prohibited marks per se once public notice of their adoption and use under subparagraphs 9(1)(n)(i) or (ii) is given in the Trademarks Journal. The information that is published in the Trade-marks Journal is also entered in the database which enables both the public and examiners to find any prohibited marks during a search.

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

This subparagraph differs from 9(1)(n)(i) and (ii) in two respects. First, the request concerning the adoption and use of the badge, crest, emblem or mark must come from a public authority. Secondly, in order that public notice be given, the badge, crest, emblem or mark must have been adopted and used by the public authority as an official mark.

An official mark is an authorized mark derived from, or having the sanction of, persons in office and adopted and used by any public authority in Canada for goods or services.

In Insurance Corporation of British Columbia v. Registrar of Trade Marks (1979), 44 C.P.R. (2d) 1, Cattanach J. addressed the question of what constitutes an official mark at page 9, he stated:

What then is an "official" mark within the meaning of s. 9(1)(n)(iii). An official mark is not defined in the statute.

The Registrar in his reasons dated April 14, 1978, resorted to a dictionary meaning of the word "official". One such definition was "derived from the proper office or officer or authority".

The definition in the Shorter Oxford English Dictionary is to like effect reading "4. Derived from, or having the sanction of persons in office; hence authorized, authoritative."

And further, at page 10:

The mark so adopted falls within the dictionary meaning of the word "official" and therefore is an "official mark" within the meaning of these words.

IV.10.10.2.1 Public Authority — Official Marks

Obligation to Evaluate Public Authority Status in Canada

In order for an entity to claim the benefit of subparagraph 9(1)(n)(iii) of the Trade-marks Act, it must be a public authority in Canada. See Canada Post Corporation v. United States Postal Service (2005), 47 C.P.R. (4th) 177 (F.C.T.D.); affirmed (2007), 54 C.P.R. (4th) 121 (F.C.A.).

The Registrar will require evidence of public authority status on every request to publish an official mark pursuant to subparagraph 9(1)(n)(iii) of the Trade-marks Act. See Stadium Corporation of Ontario Ltd. v. Wagon-Wheel Concessions Ltd., [1989] 3 F. C. 132 (F.C.T.D.).

Test to be Used to Evaluate Public Authority Status

The Registrar will apply the two-part test, adopted by the Federal Court of Appeal Ontario Association of Architects v. Association of Architectural Technologists of Ontario, 19 C.P.R. (4th) 417, hereinafter referred to as "Ontario Association of Architects". The two-part test is made up of the following elements:

Governmental Control

In order to satisfy the first element of the two-part test an entity must be subject to governmental control within Canada. See Canada Post Corporation v. United States Postal Service. The test of governmental control calls for ongoing government supervision of the activities of the body claiming to be a public authority for the purpose of subparagraph 9(1)(n)(iii).

The fact that a self-regulatory body is statutory, and its objects and powers may be amended unilaterally and exclusively by the Legislature that created it, does not in law constitute "governmental control" in this context.

The test of governmental control requires that the government be enabled, directly or through its nominees, to exercise a degree of ongoing influence in the body's governance and decision-making.

The following are examples of the types of governmental control the Registrar may look for in evaluating public authority status (Ontario Association of Architects):

The fact that a body is incorporated as a non profit corporation with charitable objects, has obtained tax exempt status, the ability to issue charitable receipts to donors, or that, as a foreign charity operating in a Canadian province, it could be asked to provide its accounts, financial and corporate information to the government, is not sufficient to conclude that it is under sufficient significant government control to be a public authority. See Big Sisters Association of Ontario and Big Sisters of Canada v. Big Brothers of Canada (1997), 75 C.P.R. (3d) 177 and Canadian Jewish Congress v. Chosen People Ministries Inc. (2002), and The Registrar of Trade-marks (2002), 19 C.P.R. (4th) 186, affirmed (2003), 27 C.P.R. (4th) 193 (F.C.A).

Public Benefit

In determining whether a body's functions satisfy the public benefit requirement, it is relevant to consider its objects, duties and powers, including the distribution of its assets. In this context, a duty to do something that is of benefit to the public is relevant as an element of "public benefit", even though it is not a "public duty" in the sense of being legally enforceable by a public law remedy, such as an order of mandamus or its equivalent. (Ontario Association of Architects)

Examples of activities which are for public benefit include:

The fact that the activities of a body may also benefit its members is not a fatal objection to characterizing them as also benefiting the public.

Evidence of Adoption and Use of an Official Mark

In light of the Federal Court decision in See You In - Canadian Athletes Fund Corporation vs. Canadian Olympic Committee [2007, 57 C.P.R. (4th) 287, affirmed (2008), 65 C.P.R. (4th) 421 (F.C.A)], the Registrar will require evidence of adoption and use of an official mark. While the Trade-marks Act does not define "adoption" or "use" in regards to official marks, it was held that a common feature of both "adoption" and "use" is that there is an element of public display. See FileNET Corporation v. Canada (Registrar of Trade-marks) (2002), 22 C.P.R. (4th) 328 (F.C.A.). Although sections 3 and 4 of the Trade-marks Act are not applicable to official marks, these sections may nonetheless assist in the interpretation of the meaning of "adoption" and "use" of official marks.

The evidence adduced must demonstrate an element of public display. In FileNET Corporation v. Canada (Registrar of Trade-marks), use consisting of advertising the mark on a government website in connection with an Internet service was considered sufficient use even though the actual service was not yet available.

However, the evidence in the following examples was found to be insufficient evidence of adoption and use of official marks:

In Piscitelli v. Ontario (Liquor Control Board) (F.C.T.D.) [2002] 1 F.C. 247, it was held that the display of a sign cannot constitute adoption or use of "millennium" as an official mark because the word millennium was not distinguished in any manner surrounding the text. In this case the usage of the word "millennium" in the sign was merely as a generic or descriptive expression and not as a "mark" within the meaning of section 9 of the Trade-marks Act.

Internal use of a mark in correspondence, e-mails and memoranda is not considered evidence of adoption and use of the mark. See You In- Canadian Athletes Fund Corporation vs. Canadian Olympic Committee (unreported) 2007 FC 406.

Evidence of adoption and use of an official mark by a licensee will not be considered adoption and use by the public authority. See Canada Post Corp. v. Post Office (2000), 8 C.P.R. (4th) 289, Canadian Rehabilitation Council for the Disabled d.b.a. Easter Seals/March of Dimes National Council v. Rehabilitation Foundation for the Disabled d.b.a. Ontario March of Dimes (2004), 35 C.P.R. (4th), 270 (F.C.T.D).

IV.10.10.2.2 Public Notice — Official Marks

Public notice of official marks is given in the Trademarks Journal. Although subparagraph 9(1)(n)(iii) of the Trade-marks Act refers to goods or services, the specifying of goods or services is not a requirement for official marks. The information that is published in the Trademarks Journal is also entered in the database which enables both the public and examiners to find any prohibited marks during a search.

Once public notice of official marks has been given, they become prohibited marks and generally may not be adopted as trademarks. Accordingly, the normal commercial trademark must defer to the official mark where public notice of an official mark has been given and an identical trademark, or one so nearly resembling it as to be likely to be mistaken for it, is the subject of a pending application that has not been advertised in the Trademarks Journal. In the Federal Court of Appeal decision of Canadian Olympic Assn. v. Olympus Optical Co. (1991), 38 C.P.R. (3d) 1, Stone, J.A. stated at pages 3-4:

Counsel for the appellant strongly urges that the June 11, 1986 public notice is not to be considered because the date on which registrability is to be determined is the date the application for registration was advertised or, at the latest, the date on which the opposition was filed. We are unable to agree. In our view, the appellant acquired no rights to registration on either of those dates and the question of registrability remained at large until the matter was finally disposed of. Indeed, this view is supported by Canadian Olympic Assn., supra, in which MacGuigan J.A. stated at page 166, that the "right to register the mark is… prohibited from the time of the giving of the public notice": see also Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd., Court File No. A-263-89, judgment rendered June 24, 1991, per Desjardins J.A., at pages 9-12 [since reported 37 C.P.R. (3d) 413 at pages 422-4, 28 A.C.W.S. (3d) 103].

In our view, it is of no moment that the appellant submitted an application for registration or that the application was advertised or that the application was opposed before the June 11, 1986 public notice was given. What is critical is that at the time the application was disposed of that notice had been given. The office of the Registrar in disposing of the application was obliged by the statute to give full effect to the prohibition thus created.

IV.10.10.2.3 Test of Resemblance - Official Marks

When assessing the registrability of the applicant's trademark in view of an official mark, examiners will only consider the resemblance between the marks, even though there may be goods or services associated with the official mark.

In assessing the resemblance between the marks, examiners will apply the test as set out in Big Sisters Assn. of Ontario v Big Brothers of Canada (1997), 75 C.P.R. (3d) 177. In this decision, Mr. Justice Gibson rejected the "straight comparison" test and cited with approval the test enunciated by Mr. Justice Rothstein in Canadian Olympic Assn. v. Health Care Employees Union of Alberta (1992), 46 C.P.R. (3d) 12, that is, "the question must be determined in the context of whether a person, who, on a first impression, knowing of one mark only and having an imperfect recollection of it, would likely be deceived or confused." Mr. Justice Gibson also held that consideration may be given to the factors set out in paragraph 6(5)(e) of the Trade-marks Act, particularly the degree of resemblance between the marks in appearance or sound or in the ideas suggested by them.

IV.10.10.2.4 Paragraph 9(1)(n.1)

This paragraph provides for the protection of any armorial bearings granted, recorded or approved for use, pursuant to the prerogative powers of Her Majesty as exercised by the Governor General in respect of the granting of armorial bearings, if the Registrar has at the request of the Governor General given public notice of the grant, recording or approval.

Once public notice is given in the Trademarks Journal, these become prohibited marks. The information that is published in the Trademarks Journal is also entered in the database which enables both the public and examiners to find any prohibited marks during a search.

IV.10.11 Paragraph 9(1)(o)

This paragraph of the Trade-marks Act prohibits the adoption of any mark consisting of, or so nearly resembling as to be likely to be mistaken for, the name "Royal Canadian Mounted Police" or "R.C.M.P." or any other combination of letters relating to the Royal Canadian Mounted Police, or any pictorial representation of a uniformed member thereof.

IV.10.12 Section 10

In order to refuse a mark under section 10, examiners must first establish that, in ordinary commercial usage, the mark applied for is recognized by dealers or purchasers in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any goods or services.

Use of the mark applied for by the applicant and others in printed matter such as catalogues, in a non-trademark sense as designating the kind, quality, quantity, destination, value, place of origin or date of production of any goods or services, may be a basis for a first office action. Examiners should be careful, however, to ensure that the date of the printed matter referred to (in order to substantiate a section 10 objection) is prior to the applicant's date of adoption (see section 3) of the mark as shown in the trademark application.

In the opposition decision of Simmonds Aerocessories Ltd. v. Elastic Stop Nut Corp. (1960), 34 C.P.R. 245, the Registrar considered the registrability of the red fibre locking sleeve for a lock nut. After reviewing the evidence, which disclosed the use of like fibre locking sleeves in Canada by other manufacturers for several years, the application was refused pursuant to section 10.

Examiners may also refuse words which, through frequent and prolonged use in the marketplace (e.g., "moped" for motor powered vehicles), are recognized by deal ers in or purchasers of the goods as designating the kind of goods.

IV.10.13 Sections 9 and 10 — Informing the Applicant

When examiners find a mark or portion of the mark that consists of, or so nearly resembles as to be likely to be mistaken for, a prohibited mark, they must, in communicating with the applicant, identify which part of subsection 9(1) or section 10 is being applied. They must also state that the mark is not registrable under the provisions of paragraph 12(1)(e).

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

This paragraph provides a means whereby, with the consent of Her Majesty or such other person, society, authority or organization considered protected by subsection 9(1), prohibited matter may be registered as a trademark in connection with a business. The consent must include either the pending application number or the applied for trademark, and must be for the registration of the mark. Consent to the use of a mark with no reference to registration is not sufficient to overcome the objection. The statement "Consent from (the authority) is of record" will be included in the particulars of the application and will be published in the Trademarks Journal.

IV.10.14.1 Common Issues Regarding Consent

Time Restrictions: Consent cannot be restricted to a period of time, and must be unconditional.

Name change: In cases where the consent indicates the name of a public authority that differs from the name appearing in the database, it will be necessary to order and verify the Section 9 file to see if a request for a change of name has been provided by the public authority. If the change of name is of record, then the consent is acceptable. If the change of name is not on record then the consent is not acceptable unless evidence of a name change is provided with the consent.

Public authority no longer exists: If the applicant provides evidence that the public authority no longer exists, the objection can be withdrawn pursuant to section 37 of the Trade-marks Act since the Registrar cannot be satisfied that the mark is not registrable under the provisions of paragraph 12(1)(e).

Transfers, Mergers or Amalgamations: The Registrar does not recognize transfers, mergers or amalgamations regarding official marks notwithstanding that documentation may have been received by the Office and placed on file. Consequently, examiners cannot accept consent emanating from the new public authority. If the applicant provides submissions to the effect that the entity no longer exists due to a merger or amalgamation, or that a transfer of the prohibited mark has occurred, consent from the new entity would be required. In such cases, the objection can be withdrawn pursuant to section 37 since the Registrar cannot be satisfied that the mark is not registrable under the provisions of paragraph 12(1)(e).

IV.10.14.1.1 Paragraph 9(2)(b)

Subparagraph 9(2)(b)(i) stipulates that if the trademark applied for consists of, or so nearly resembles as to be likely to be mistaken for, an official sign or hallmark mentioned in paragraph (1)(i.1), an objection will be raised if the goods are the same or similar to the goods in respect of which the official sign or hallmark has been adopted. On the other hand, if the goods in question are totally dissimilar, then no objection will be raised.

Subparagraph 9(2)(b)(ii) stipulates that if the trademark applied for consists of, or so nearly resembles as to be likely to be mistaken for, an armorial bearing, flag, emblem or abbreviation mentioned in paragraph (1)(i.3), an objection will be raised if use of the mark is likely to mislead the public as to a connection between the user and the organization. On the other hand, if it is unlikely that the public would be misled, then no objection will be raised.

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

Where a denomination must, under the Plant Breeders' Rights Act, be used to designate a plant variety, no person shall adopt it as a trademark in association with the plant variety or another plant variety of the same species or use it in a way likely to mislead. Nor shall any person so adopt or so use any mark so nearly resembling that denomination as to be likely to be mistaken for it.

Agriculture and Agri-Food Canada has the mandate to grant rights for denominations of plant varieties under the Plant Breeders' Rights Act. These rights give owners control over the multiplication and sale of reproductive material. Protection is for up to eighteen years.

The grants are published in the Plant Varieties Journal, a copy of which is sent to the Trademarks Office regularly. The Office then incorporates this information in the official index which enables both members of the public and examiners to find these prohibited marks during a search.

In cases where a trademark applied for is the same as or similar to one of these prohibited marks and the application covers the plant variety or another plant variety of the same species, the examiner must raise an objection under paragraph 12(1)(f).

Note: A disclaimer cannot overcome an objection raised under paragraph 12(1)(f).

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

These paragraphs relate to protected geographical indications for wines, spirits or agricultural products or foods. The Registrar of Trade-marks is required to keep 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.

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, the application is objected to pursuant to paragraph 12(1)(g), (h) or (h.1) of the Trade-marks Act, as applicable.

To overcome an objection raised pursuant to paragraph 12(1)(g), (h) or (h.1), the applicant must provide a written statement that the goods originate in a territory indicated by the geographical indication.

A disclaimer does not overcome an objection raised pursuant to paragraph 12(1)(g), (h) or (h.1).

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

Paragraph 12(1)(i) of the Trade-marks Act states:

Subject to section 13, a trademark is registrable if it is not …

(i) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and Paralympic Marks Act, a mark the adoption of which is prohibited by subsection 3(1) of that Act.

Section 3 of the Olympic and Paralympic Marks Act states:

3. (1) No person shall adopt or use in connection with a business, as a trademark or otherwise, an Olympic or Paralympic mark or a mark that so nearly resembles an Olympic or Paralympic mark as to be likely to be mistaken for it.

(3) Subsections (1) and (2) do not apply to an organizing committee, the COC or the CPC.

(4) Nothing in subsection (1) or (2) prevents:

(a) the adoption, use or registration, as a trademark or otherwise, of a mark described in subsection (1) or (2) if the person has obtained the written consent of an organizing committee during any period prescribed by regulation or of the COC or the CPC during any other period, and acts in accordance with that consent;….

An objection must be raised if the applied for trademark consists of or so nearly resembles an Olympic or Paralympic mark as to be likely to be mistaken for it. As of January 1, 2011, only marks found on schedule 1 of the Olympic and Paralympic Marks Act are to be considered. These marks will show up on the confusion search results. To distinguish them, a footnote has been inserted indicating that these are not official trademarks but that they have been added as part of Bill C-47.

IV.11 Disclaimers — Section 35

Section 35 of the Trade-marks Act reads as follows:

The Registrar may require an applicant for registration of a trade-mark to disclaim the right to the exclusive use apart from the trade-mark of such portion of the trade-mark as is not independently registrable, but the disclaimer does not prejudice or affect the applicant's rights then existing or thereafter arising in the disclaimed matter, nor does the disclaimer prejudice or affect the applicant's right to registration on a subsequent application if the disclaimed matter has then become distinctive of the applicant's goods or services.

This section enables an applicant to disclaim certain portions of a trademark which would otherwise be unregistrable, subject to the conditions set out in this part of this Manual.

The Registrar generally no longer requires an applicant for registration of a trademark to enter disclaimers pursuant to section 35 of the Trade-marks Act. Voluntary disclaimers will continue to be accepted.

Note: Where a portion of the trademark consists of the eleven-point maple leaf, a disclaimer is required pursuant to the September 2, 1965 Order-in-Council PC 1965, 1623.

IV.12 Subsection 12(2) — Distinctiveness

IV.12.1 General

A trademark which is not prima facie registrable under the provisions of paragraph 12(1)(a) or (b) may be registered if it has been used in Canada so as to have become distinctive at the date of filing of the application in Canada, pursuant to subsection 12(2). An applicant may not claim the benefits of subsection 12(2) if the mark is objectionable under paragraph 12(1)(c), (d), (e), (f), (g), (h) or (i).

A trademark becomes distinctive throughout Canada or in some provinces when it has come to be recognized by the Canadian public, not as the unregistrable word, but as a word which, when used in association with the goods or services applied for, serves to distinguish the goods or services of the applicant from those of others. The word is said to have acquired a secondary meaning with respect to the goods or services in that when the word is presented to the public, whatever primary meaning it may have is submerged, and only the trademark designation remains.

Proof of distinctiveness or secondary meaning must be filed by way of affidavit or statutory declaration meeting the requirements of subsection 32(1), and distinctiveness must be established at the date of filing of the application. Proof of distinctiveness must be offered as described in the following section.

IV.12.2 Evidence

It is possible to appeal to the Federal Court of Canada the refusal of an application which has claimed the benefit of subsection 12(2) or any opposition decision which such an application may be subject to. Therefore, the evidence filed before the Trademarks Office should be in a form which is admissible in the Federal Court of Canada and should follow its rules of evidence.

Further, section 40 of the Canada Evidence Act, provides:

In all proceedings over which Parliament has legislative authority, the laws of evidence in force in the province in which those proceedings are taken, including the laws of proof of service of any warrant, summons, subpoena or other document, subject to this Act and other Acts of Parliament, apply to those proceedings. R.S., c.E-10, s.37.

Evidence shall be furnished by way of affidavit or statutory declaration pursuant to subsection 32(1) and should be submitted by an affiant having first-hand knowledge of the situation. It is incumbent upon the applicant to produce the best evidence available.

Affidavits should be sworn and statutory declarations should comply with the requirements for Statutory Declarations in section 41 of the Canada Evidence Act. Each exhibit should be identified together with the signature of the notary or commissioner taking the affidavit or receiving the statutory declaration.

IV.12.2.1 Master Affidavits

When submitting an application based on a subsection 12(2) claim of distinctiveness, the applicant must file a master affidavit. If filed on behalf of a company, the master affidavit should be submitted by a knowledgeable officer of the company including the status of the declarant, i.e., president, manager, secretary, and so on and the particulars of the applicant company, i.e., when and how it was founded, and where it carries on business. In all cases the affiant must be identified and the basis and source of the person's knowledge explained. The affidavit should be accompanied by specimens of the mark as used in relation to the goods or services and the following information supplied:

  1. A statement of the nature of use of the mark in association with the goods or services.
  2. An explanation concerning the manner of association of the mark at the time of any transfer of property or transfer in the possession of goods.
  3. A statement on the manner of use of the mark in the advertisement of goods or services pursuant to sections 4 and 5 of the Trade-marks Act, accompanied by specimens of advertising material.
  4. Statements which clearly indicate the extent of use of the mark for each territory (province) in which the mark is stated to have become distinctive. For example, in claiming that the mark has achieved distinctiveness in Canada at the date of filing, the applicant must show that the mark has achieved secondary meaning in each of the provinces.
  5. Statements which attest to the length of time of use of the mark in association with the goods or services.

The extent of use may be stated in terms of units, price per unit, dollar volume of sales, or percentage of the market for the goods or services performed, sold, leased or hired in association with the mark, separated by province and by year. Further, sales figures should not be divided by province based on a pro-rated calculation of the population but based on real figures. The evidence may refer to the mode of distribution, the number of distributors, and the number of outlets in which the product or services associated with the mark is offered for sale.

As for the manner and extent of advertising, the affidavits should indicate the number of ads and dollar volume for each type of media, separated by province and by year. Information attesting to th e geographical area covered by the advertisements is essential.

The evidence provided must be limited to the relevant period, namely between the date of first use in Canada and the date of filing of the application.

IV.12.2.2 Additional Affidavits

Additional affidavits, i.e., from dealers in or users of the goods, will not be required in all cases to support a claim under the provisions of subsection 12(2) of the Trade-marks Act.

The master affidavit may be sufficient as long as the criteria set out in part IV.12.2.1 of this Manual are met, particularly where territorial sales and advertising are concerned.

Only when there is some doubt whether the trademark had acquired distinctiveness as of the date of filing, and depending on the particular mark and circumstances involved, will the Office require additional evidence, possibly by means of supplementary affidavits.

These additional affidavits may be from advertising agencies, distributors, wholesalers, retailers and users who can attest as to the secondary meaning of the word or words in association with the goods or services at or preceding the date of filing in Canada. These affidavits should also relate to the form of use, extent of use, length of use, and territory of use of the mark applied for in relation to the goods or services set out in the application.

IV.12.2.3 Survey Evidence

Surveys are now used extensively in commerce and many business decisions are based on their results. If a market survey is to be used as evidence, in order to be worthwhile, it must be carried out by a person who can file an affidavit which attests to the fact that this person is an expert in designing, organizing, implementing and interpreting survey results. A qualified surveyor will set out the strategy and statistical basis of the survey and will explain the form of the questions asked and the manner in which the survey is conducted. All the results of the survey must be reported — both negative and positive — and the interpretation of the results fully explained.

A properly conducted survey was accepted as evidence of secondary meaning by Cameron J. in Aluminum Goods Ltd. v. Registrar of Trade Marks (1954), 19 C.P.R. 93. In completing his review of the evidence, Cameron J. stated at page 97:

It is sufficient to state that as a result of the questioning, 91% of 3,007 housewives and 96.5% of 505 dealers identified "Wear-Ever" as a brand. It is a significant fact that while 44% of the dealers questioned did not deal in "Wear-Ever" utensils, 96.5% of all identified "Wear-Ever" as a brand, thus indicating the widespread knowledge among dealers of the manner in which the word was used.

On the whole of the evidence I have no hesitation whatever in reaching the conclusion that the petitioner has satisfied the onus cast upon it by s. 29….

And further, at pages 97-98:

It is true, as pointed out by counsel for the Registrar of Trade Marks, that the recognition by dealers and users is not perhaps universal, a small percentage of those questioned stating that they thought the word referred to a quality of the wares and was not used as a brand. The section, however, requires only that the trade mark be generally recognized in the manner stated. To borrow a phrase used by the Master of the Rolls in the Sheen case — Re J. & P. Coats Ltd's Application (1936), 53 R.P.C. 355 at page 381 — the distinctiveness in fact in this case is as wide and as long continued as one could expect to find in any case.

In Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1, Judge Cattanach, after reviewing the law relating to survey evidence and reviewing the form and content of the survey submitted, admitted the survey evidence. At page 9, Cattanach J. stated:

In my view the admissibility of survey evidence and the probative value of that evidence when admitted is dependent on how the poll was conducted, the questions asked, how they were asked and how they were framed and what purpose the evidence is to be used for. There would be no objection to evidence being admissible when the poll is put forward not to prove the truth of the statements it contains but merely to show the basis of an expert's opinion, or as in the present instance, an assessment of the results of the survey.

In Boyle-Midway (Canada) Ltd. v. Farkas Arpad Homonnay (1976), 27 C.P.R. (2d) 178, a public opinion survey was refused by the Acting Registrar on the grounds that it was substantially in breach of all the rules governing admissibility of public survey evidence. See also the decision of Mr. Justice Mahon in Customglass Boats Ltd. v. Salthouse Brothers Ltd. (1975), R.P.C. 589, for a review of Canadian, U.S. and British law on admissibility of public opinion evidence.

The survey results should be in addition to the master affidavit filed by the applicant or a knowledgeable officer of the applicant company.

IV.12.2.4 Restriction as to Territory

While it may be difficult to establish that a mark has acquired secondary meaning, examiners should, if satisfied from a review of the evidence that this has occurred, permit the mark to proceed to advertisement with a restriction as to territory if necessary pursuant to subsection 32(2) of the Trade-marks Act. In Standard Coil Products (Canada) Ltd. v. Standard Radio Corp. (1971), 1 C.P.R. (2d) 155, Cattanach J., after reviewing the evidence, concluded at page 173:

Under the circumstances of the case I have come to the conclusion that the appellant has been successful in discharging the onus of establishing that the trade mark STANDARD actually distinguishes its product.

See also Home Juice Co. v. Orange Maison Ltée (1967), 53 C.P.R. 71 at pages 77-78, where ORANGE MAISON was held to have acquired a distinctive meaning in relation to the orange juice of the respondent and its predecessors in title among dealers and purchasers of orange juice in the Province of Quebec.

IV.12.3 Determination of Distinctiveness — Subsection 12(2)

The evidence filed by the applicant must be sufficient to enable the examiner to conclude that the public in Canada, or in a territory or province, perceives the descriptive word, name or surname (as used by the applicant in association with the goods or services applied for), as a word which distinguishes the goods or services of the applicant from those of others. The primary descriptive connotation or surname significance will have been subordinated in the mind of the public in relation to the particular goods or services applied for, and its secondary meaning will dominate.

A word having a primarily descriptive or name/surname significance cannot reasonably be expected to have acquired a secondary meaning as a trademark to every last individual in the territory. The proof of distinctiveness pursuant to subsection 12(2) requires only that there be a substantial recognition of the secondary meaning of the mark by dealers and/or the public.

Nevertheless, the evidence of acquired distinctiveness or secondary meaning must be strong and convincing. As Fox stated in Canadian Law of Trade Marks and Unfair Competition, 3rd edition at page 131:

There will, of course, always be considerable difficulty in convincing the Registrar, or the court, that a prima facie unregistrable word has acquired a secondary meaning sufficient to permit its registration, for the legislature and the courts have always shown a natural disinclination to allow any person to obtain by registration a monopoly in what others may legitimately desire to use.

IV.12.3.1 Prior Decision

The words "adapted to distinguish" appeared in paragraph 2(m) of the Unfair Competition Act, 1932, but do not appear in the Trade-marks Act. The words "adapted to distinguish" required that a word not only be distinctive in fact, but secondly, that the word must be inherently adapted to distinguish. In applying the provisions of the Unfair Competition Act, certain laudatory words such as SUPER-WEAVE were found not inherently adapted to distinguish and therefore could never be registrable based on acquired secondary meaning. See Registrar of Trade Marks v. G.A. Hardy & Co. Ltd. (1949), 10 C.P.R. 55.

IV.12.3.2 Onus

An applicant who contends that a name, surname or descriptive word has acquired a secondary meaning is under heavy onus to prove it. As Cattanach J. stated in Standard Coil Products (Canada) Ltd. v. Standard Radio Corp. (1971), 1 C.P.R. (2d) 155 at page 172, when considering whether the mark STANDARD had acquired a secondary meaning in Canada in association with the goods television tuners:

It remains for me to assess the probative value of such evidence. In so doing I am conscious that the onus on a person contending that a trade mark which is descriptive or laudatory of his wares has come to actually distinguish those wares is a heavy one and that onus is increased by the adoption of a word which lacks inherent distinctiveness.

Also in Carling Breweries Ltd. v. Molson Companies Ltd. (1984), 1 C.P.R. (3d) 191, Strayer J. stated:

I am not only of the view that the onus lay instead on the applicant to prove distinctiveness within s-s. 12(2), but I also think that it was a very heavy onus given the nature of the mark CANADIAN. There are various authorities to the effect that where one must prove that a normally descriptive word has acquired a secondary meaning so as to make it descriptive of a particular product, the onus is indeed heavy: see, for example, Canadian Shredded Wheat Co. v. Kellogg Co. et al [1938] 2 D.L.R. 145 at pages 151-2, 55 R.P.C. 125 at page 142 (J.C.P.C.); J.H. Munro Ltd. v. Neaman Fur Co. Ltd. (1946), 6 C.P.R. 97 at page 113, [1947] 1 D.L.R. 868, 5 Fox Pat C. 194 at page 208 (Ex.Ct.). In my view, this is particularly true where the word is one such as "Canadian" which is first and foremost, legally and factually, an adjective describing any citizen of this country, and more particularly for present purposes any product of any sort having its point of origin in this country. As used in conjunction with the word "beer" it is capable of describing any such malt beverage produced in Canada by any brewer. The onus, as I have noted above, is on the applicant for registration of such a mark to demonstrate clearly that it has become so distinctive of his product that it has acquired a secondary meaning which would not, vis a vis the relevant public, normally be confused with the primary meaning of the word.

This decision was upheld at the Federal Court of Appeal (1988), 19 C.P.R. (3d) 129.

IV.13 Section 14 — "Not Without Distinctive Character"

Subsection 31(2) of the Trade-marks Act provides for the submission of an application to register a trademark which the applicant has registered in his/her country of origin, as long as the applicant furnishes evidence which shows that the mark is "not without distinctive character" in Canada pursuant to paragraph 14(1)(b).

Trademarks which are not registrable because they are names or surnames within the definition set out in paragraph 12(1)(a), or which are clearly descriptive according to paragraph 12(1)(b), may be registered pursuant to section 14. In order to claim the benefit of section 14, the applicant or its predecessor in title must have registered the trademark in or for the country of origin of the applicant in association with the same goods or services and must furnish a certified copy of the corresponding registration and any other evidence required by the Registrar. A section 14 claim need not be entered at the time of filing the application. See subsections 31(1) and 31(2).

The applicant must submit an affidavit, specimens and details about the value and volume of sales, although the extent to which he/she must offer proof of distinctiveness is clearly reduced when compared with an applicant claiming the benefit of subsection 12(2).

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

Section 14 of the Trade-marks Act differs substantially from paragraph 28(l)(d) of the Unfair Competition Act in that benefits will be accorded:

  1. only if the trademark is not without distinctive character in Canada; and
  2. only after the Trademarks Office has taken into account all the circumstances of the case, including the length of time during which such trademark has been used in any country.

The word "distinctive" in the expression "not without distinctive character," should be given the meaning ascribed to it in section 2 of the Trade-marks Act. The person who is entitled to rely on section 14 is given some advantage over a person who must rely on subsection 12(2) of the Trade-marks Act. While both persons must satisfy the Registrar as to the distinctive character of their trademarks, the burden of adducing evidence is lighter in the case of the person relying on section 14, in part since use of the mark in association with the goods or services is not required.

For example, in order to prove acquired distinctiveness of a mark pursuant to subsection 12(2), the applicant must show that it has acquired a secondary meaning throughout Canada, unless the applicant is prepared to accept territorial limitations. The applicant who invokes section 14 however, has only to show that the mark is not without distinctive character in Canada by virtue of the manner and extent to which it has been used or advertised. It need not be shown that such distinctiveness existed as of the date of filing of the application. Territorial limitations are not applicable.

Section 14 evidence will be questioned if it shows that use or making known of the trademark has been by a person other than the applicant. The evidence will be acceptable if it shows use or making known by the applicant, its predecessor in title or, under certain conditions, by a licensee. See subsection 50(1). Evidence of use or making known by a subsidiary, etc., is not acceptable. In those cases of spill-over advertising into Canada, proof of actual use in Canada may not be a prerequisite.

IV.13.2 Data Required on Affidavits

The affidavit or statutory declaration in support of a claim to registration based on section 14 of the Trade-marks Act should contain the following information:

  1. the status of the declarant, i.e., president, manager, secretary, and so on;
  2. particulars of the applicant company, i.e., when and how it was founded, and where it carries on business;
  3. the goods or services in association with which the mark is used — the list should be detailed — and the date of first use anywhere in the world;
  4. the date as of which the goods or services have been sold under the trademark in Canada. If there has been no use of the trademark in Canada, the Office expects proof of spill-over advertising into Canada;
  5. a list of the countries in which the trademark is used in association with the same goods or services;
  6. a list of the countries in which the trademark has been registered;
  7. the approximate total volume and value of the goods or services sold or performed in Canada in association with the trademark, and the approximate total value of such goods or services sold in other countries;
  8. the approximate total volume and value of advertising of the trademark in Canada and in other countries;
  9. sample advertisements, labels, etc., as used in Canada and elsewhere, mounted, where possible, on paper which will fit on the application file.

IV.13.3 Further Notes on Section 14

  1. The trademark which the applicant seeks to register in Canada may differ from the trademark registered abroad only by elements that do not alter its distinctive character or affect its identity. See subsection 14(2). In practice, only minimal differences are permitted.
  2. The goods or services associated with the trademark in the Canadian application may not extend beyond those covered by the foreign registration. For example, a trademark registered in or for a country of the Union in association with "electric kettles" would not support an application for registration of the mark in Canada in association with "small electrical appliances, namely, kettles, coffeepots, coffee makers and carafes".
  3. If the Registrar is not satisfied that evidence furnished pursuant to subsection 31(2) establishes that the trademark is "not without distinctive character in Canada," further evidence may be required. Such evidence may be in the form of affidavits from independent persons in Canada attesting that they recognize the trademark as indicating the applicant's goods or services. However, the applicant might succeed in establishing the claim by providing evidence of more advertising of the trademark in Canada than was given in the original affidavit.
  4. All affidavits submitted pursuant to subsection 31(2) of the Trade-marks Act should be accompanied by specimens of advertisements and exhibits showing the manner of use of the trademark.
  5. An applicant who wishes to claim the benefits of section 14 and whose statement of use of the mark in Canada is extended to cover additional goods or services, may, if there has been extensive use of these, rely on the provisions of subsection 12(2) and section 32 of the Trade-marks Act to establish acquired distinctiveness in association with those additional goods or services.
  6. A certified copy is required in all instances where the benefit of section 14 is claimed, regardless of whether an objection to registrability under paragraph 12(1)(a) or (b) is raised or not.

IV.14 Voluntary Restrictions as to Territory

Voluntary exclusions of any province or territory are not permitted in view of section 19 of the Trade-marks Act. Subsection 32(2) requires the registrar to restrict the registration where warranted in regards to subsection 12(2) and section 13 only. Newfoundland restrictions are possible as section 19 is subject to section 67, however, this is only possible if there is a confusing Newfoundland registration.


Previous | Table of Contents | Next

Date modified: