Trademarks Examination Manual — Page 5 of 5
On this page:
- Examiners' Reports
- Objection to Registration — Subsection 37(2)
- First Actions
- Goods or Services
- Paragraph 12(1)(a)
- Paragraph 12(1)(b)
- Paragraph 12(1)(c)
- Paragraph 12(1)(d)
- Paragraph 12(1)(e)
- Dates of Entitlement
- Multiple Claims
- Second and Third Actions
- Third and Subsequent Actions
- Applicant's Failure to Reply
- Extensions of time — Examiners' Reports and Section 36
- Effect of Abandoned Trademark Applications
- Letter of Refusal
V Examiners' Reports
V.1 Objection to Registration — Subsection 37(2)
Subsection 37(2) of the Trade-marks Act states that:
The Registrar shall not refuse any application without first notifying the applicant of his objections thereto and his reasons for those objections, and giving the applicant adequate opportunity to answer those objections.
The Registrar's objections to registration are communicated to the applicant by way of the examiners' reports and deal with:
- the conformity of the application to the requirements of section 30;
- the registrability of the trademark in light of the provisions of section 12; and
- the applicant's entitlement to registration in light of co-pending and confusing applications.
V.2 First Actions
Examiners' reports which are prepared after the initial examination of the application and the trademark for which registration is requested are often called "first actions". The examiners' first actions or "first report" should set out all the requirements which need to be remedied before the application can proceed to advertisement. Examiners must not engage in piecemeal reporting since this leads to undue protraction of the examination process and a high incidence of oversight and error. It is also disconcerting for the applicant (or the agent) who has complied with the formal requirements of an examiner's report only to be told in a subsequent report that the examiner is now objecting to the registration of the mark.
However, it must also be noted that there may be circumstances which justify raising issues not dealt with in an initial report. The Registrar has until the advertisement of the application to exercise his authority as to whether the trademark is registrable or not. See Beaver Knitwear Ltd. v. Registrar of Trademarks (1986), 11 C.P.R. (3d) 257.
First actions are, for the most part, written in standardized form. To comply with the provisions of subsection 37(2), examiners must give reasons for statutory objections and so will incorporate the information necessary for a fuller explanation of the objection. Circumstances which require issuing of examiners' reports are described below.
V.3 Goods or Services
The statement of goods or services will be deemed unacceptable and an amended application should be required in the following cases:
- If the applicant does not name the specific goods or services in ordinary commercial terms. Terms such as "accessories" or "equipment" or "products" in, for example, "ladies dresses and accessories" or "artist's equipment" or "agricultural products" should be questioned.
- When further information is required as to how goods or services are used in commerce, e.g., if examiners are unable to identify the area of use of the goods or services. In this case examiners may ask for illustrative or advertising materials.
The online Goods and Services Manual provides further information on the principles and guidelines that will be used in the assessment of the statement of goods or services and provides examples of what will be considered acceptable.
V.4 Paragraph 12(1)(a)
An objection raised pursuant to paragraph 12(1)(a) must be supported by giving the number, or an approximate number, of the listings names or surnames found in Canadian telephone directories, unless the objection is based on the existence of a famous individual. In the latter case, the examiner will provide supporting evidence .
V.5 Paragraph 12(1)(b)
An objection that a mark is clearly descriptive as a whole or deceptively misdescriptive (either a portion or portions of the mark or the trademark as a whole) should be supported by identification of the sources of information on which the examiner based the objection and/or an explanation as to how that information applies to the description of the particular goods or services. An exception is made when the descriptive objection is based on the fact that the trademark is an obvious laudatory epithet.
V.6 Paragraph 12(1)(c)
An objection, based on the fact that the trademark is the name of the goods or services in any language, may be supported by the translation of the mark as provided by the applicant.
V.7 Paragraph 12(1)(d)
An objection pursuant on paragraph 12(1)(d) is always supported by a copy of the registration of the trademark with which the applicant's trademark is considered to be confusing within the terms of subsection 6(2) of the Trade-marks Act. Examiners should always verify that the copy relates to the appropriate registration identified by the registration number and that the registered trademark is in good standing
V.8 Paragraph 12(1)(e)
When raising a paragraph 12(1)(e) objection, examiners must be careful to distinguish between the basis for the objection and the reasons for it. The reasons for the objection are set out in subsection 9(1) and section 10 of the Trade-marks Act, while its basis is in the provisions of paragraph 12(1)(e).
When an objection to registration is made for a mark which is prohibited by reason of public notice having been given pursuant to paragraphs 9(1)(e), (i) or (n), it must always be supported by a copy of the public notice.
When an objection to the registration is made for a mark which is prohibited, as defined in section 10 of the Trade-marks Act, examiners must provide evidence which shows ordinary and bona fide commercial usage of the mark.
V.8.1 Paragraph 12(1)(f)
When raising an objection pursuant to paragraph 12(1)(f), examiners must provide a copy of the plant variety denomination published in the Plant Varieties Journal.
V.8.2 Paragraphs 12(1)(g), (h) and (h.1)
When raising an objection pursuant to paragraphs 12(1)(g), (h) or (h.1), examiners must provide information pertaining to the protected geographical indication.
V.9 Dates of Entitlement
As previously discussed in section III.6 of this Manual, in view of Attorney General of Canada v. Effigi Inc. (2005), 41 C.P.R. (4th) 1, the date of first use is not a relevant consideration pursuant to paragraph 37(1)(c) of the Trade-marks Act in determining if the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending.
If the application bearing the later filing date discloses an earlier priority date in association with the same or similar goods or services, then it will be considered to be the entitled application regardless of an earlier date of first use or making known, as shown in the following example:
- Applicant: XYZ Company
- Mark: AJAX
- Goods: motor trucks — used in Canada since at least November 1992
- Filed: September 17, 2005
- Applicant: ABC Company
- Mark: AJAX
- Goods: motor-driven vans — registration and use abroad
- Filed: December 1, 2005
- Priority Date: August 3, 2005
In the above case, ABC Company is entitled to registration since the priority date of August 3, 2005 is earlier than the date of filing of the application by XYZ Company.
V.10 Multiple Claims
It may happen that an application contains a claim of first use or making known in Canada, and use and registration abroad, and/or proposed use in Canada for a trademark which is found to be confusing with a trademark in an application subsequently filed. Examiners must carefully assess the dates of entitlement with respect to each of the goods or services associated with the marks. See example below:
- Applicant: ABC Company
- Mark: AJAX
- Goods: Plant growth regulators – used in Canada since before June 11, 1993
- Insecticides – registration and use abroad
- Hair colouring preparations – proposed use
- Filed: September 17, 2005
- Applicant: XYZ Company
- Mark: AJAX
- Goods: Shampoo – made known in Canada since May 11, 1993
- Agricultural chemicals – proposed use in Canada
- Filed: December 2, 2005.
- Priority Date: August 3, 2005 in association with "agricultural chemicals"
In this example, ABC Company is entitled with respect to the goods "hair colouring preparations" since the date of filing its application is earlier than the date of filing of the XYZ Company's application based on having made known the trademark in Canada in association with the goods "shampoo".
However, XYZ Company is entitled with respect to the goods "agricultural chemicals" since its priority date is earlier than the date of filing of ABC Company's application based on use in Canada in association with the goods "plant growth regulators" and registration and use abroad in association with "insecticides".
The examiner must send a report to both applicants explaining that they are entitled in respect of one set of goods but not entitled in respect of the other set of goods.
V.11 Second and Third Actions
(See also the practice notice entitled Extension of the deadline for responding to examination reports)
An examiner's report contains a notice to the effect that a proper response should be filed within the stated time limit, failing which, the Registrar will institute abandonment procedures. This is considered to provide adequate time to answer objections, as provided for in subsection 37(2).
The Office considers that a proper response consists of a response wherein all objections and/or requests raised in the examination report have been addressed. If the applicant fails to file a proper response upon the expiration of the six months period, he will be considered to be in default in the prosecution of the application pursuant to section 36 of the Trade-marks Act and a notice of default will be issued. The applicant must deal with all issues raised in the examiner's report in order to have the application approved for advertisement in the Trademarks Journal.
While the examiner's first action identifies the problems evident in the application, the second action considers the applicant's response and identifies the areas in which the applicant has failed to overcome the objections raised in the initial report. It must also review all questions relating to the formal requirements of the application and the registrability of the trademark which have not been satisfactorily answered in the applicant's response.
Furthermore, when reviewing with submissions in which an applicant points to a number of advertised and registered marks similar to the subject mark, the examiner must explain the perceived inconsistencies to some extent in the second action. See Canadian Parking Equipment Ltd. v. Canada (Registrar of Trade Marks) (1990), 34 C.P.R. (3d) 154.
Second actions will usually include a paragraph warning the applicant that only one further opportunity remains in which to overcome the Registrar's statutory objections. The applicant is again allowed time to reply. An example of the "warning paragraph" is as follows: "You are further advised that this application may be refused under subsection 37(1) of the Trade-marks Act if your next response does not overcome the aforesaid objection(s)."
If the applicant's second response succeeds in answering all objections to registration, the application will be accepted for advertisement. Acceptance for advertisement is considered to be the "disposal" of the application on the part of examiners.
The Trade-marks Act does not provide for intervention by third parties prior to advertisement. After advertisement, any interested person may intervene pursuant to the opposition procedure set out in the Trade-marks Act and Regulations. The Office does not maintain a notice service. The responsibility for maintaining a watching brief on the application rests with the potential opponent. Therefore, any letter of intervention received by the Office prior to the advertisement will be returned to the sender.
V.11.1 Telephone Amendments
(See also the practice notices entitled Amendments to Trademark Applications and Amendments to Trademark Applications Requested Prior to Examination)
Rule 4 of the Trade-marks Regulations states that:
- Communication in respect of a trademark shall be in writing, but the Registrar may also consider oral communications.
- The Registrar may request that an oral communication be confirmed in writing.
In certain cases it is more efficient to handle some issues by telephone. Issues which are controversial, such as changes to the statement of goods or services, the trademark itself, the date of first use, the basis of filing or the identity of the applicant, must be handled only with written authorization from the applicant or agent. However, it may be helpful for examiners to discuss potential amendments or objections with the applicant/agent by telephone in order to expedite resolution of all outstanding issues raised in the examiner's report.
V.11.1.1 Confirmation Not Required
The following amendments may be made by examiners without contacting the applicant or the agent:
- Changing the word "goods" to "services" or vice versa in the entitlement paragraph where it is obvious that an error was made.
- Adding the phrase "and the applicant requests registration in respect of such goods or services".
- Amending the identification of the trademark when there is no doubt that it is a word or a design.
- Crossing out the name of the former representative for service if a new one has been appointed.
V.11.1.2 Written Confirmation Not Required
The following amendments may be made by examiners following a telephone conversation with the applicant or agent without written confirmation.
- Inserting the date of first use or of making known when it has been forgotten in the revised application.
- Inserting the country of use when it has been forgotten in the revised application.
- Inserting the disclaimer when it has been forgotten in the revised application, but is mentioned in the covering letter.
- Deleting TM or R symbols from the drawing where it does not affect the quality of the drawing.
- Correcting spelling errors in statements of goods or services.
- Entering the serial number in priority claims.
V.11.1.3 Written Confirmation Required
The following amendments can only be made upon receipt of written confirmation from the applicant or agent in view of their controversial nature:
- Amending, adding or deleting the statement of goods or services.
- Amending, adding or deleting a disclaimer statement.
- Correcting a typographical error in the applicant's name.
- Changing the trademark.
- Adding the statement that the applicant "is satisfied that he is entitled to use the trademark in Canada" pursuant to paragraph 30(i).
V.11.2 Approval and Advertisement
Once a trademark application complies with all the formal requirements and any statutory objections have been overcome, the examiner will approve the application for advertisement in the Trade-marks Journal. A pre-publication search will be conducted and if no co-pending confusing marks are found, the approval notice will be issued. The particulars of the application will then be advertised in the Trade-marks Journal.
After the application has been published in the Trade-marks Journal, if it is discovered, before allowance, that the Trademarks Office made a clerical error in the original advertisement, the applicant may request in writing that the erroneous advertisement be declared a nullity and ask that the Registrar advertise the application with the correct information in the Trade-marks Journal. Alternatively, the Office may publish an erratum in the Trademarks Journal, depending on the nature of the clerical error. See: Enterprise Car & Truck Rentals Ltd. v. Enterprise Rent-A-Car Co. (2000), 7 C.P.R. (4th) 368 and McDonald's Corp. v. Registrar of Trade-Marks (1989), 24 C.P.R. (3d) 463.
V.12 Third and Subsequent Actions
Circumstances sometimes arise during the prosecution of an application which interfere with its early disposal and necessitate reports.
V.12.1 Evidence Requirements
The point at issue may be a statutory bar to registration of the trademark, such as a paragraph 12(1)(a) or 12(1)(b) objection. The applicant may claim the benefits of section 14 or subsection 12(2). In either of these situations, actions outlining evidence requirements, and/or an evaluation of the evidence submitted may be issued.
V.12.2 Deletion of Goods or Services
The applicant's second response may be accompanied by a revised application in which specific goods or services have been deleted to overcome the likelihood of confusion with a registered or pending trademark cited by the examiner. Reexamination of the application would be required with respect to confusion, which may result in the withdrawal of the confusion objection or may result in the issuance of a further action.
V.12.3 Additional Information
Examiners may issue a report to request further information on points raised in an applicant's argument, if they feel that circumstances warrant it.
V.12.4 Clarification by Examiners
A report may also be necessary where it appears to the examiner that the applicant has not understood the nature of a requirement or the reasons for an objection to registration.
V.12.5 Further Entitlement Objections – Pre-publication Search
A report may also be necessary when a newly filed application that has been discovered as the result of a pre-publication search is found to be confusing with a mark which has already been examined but which has not yet been published. In these cases examiners must determine the entitled party, inform the applicant of the existence of the later-filed application and, if applicable, inform the non-entitled party that it does not appear to be the person entitled to registration.
V.12.6 Notice Pursuant to Section 44 and/or Section 45
The applicant may request that a notice pursuant to the provisions of section 44 and/or section 45 be sent to the registered owner of a trademark with which the subject trademark is considered to be confusing. This may result in an extended processing period and will require re-examination and further action by the examiner.
V.12.7 Consent — Confusing Marks
Although there are no provisions in Canadian law which recognize the mutual consent of the parties as a basis for waiving the criteria enumerated at section 6 of the Trade-marks Act, examiners may consider an agreement between an applicant and the owner of a cited mark with respect to the coexistence of the two trademarks as one of the "surrounding circumstances" to be regarded when determining confusion pursuant to subsection 6(5) of the Trade-marks Act.
The Registrar will not normally give favourable consideration where the trademarks involved are identical and/or where the goods or services covered by the trademarks are overlapping. Therefore, in addition to the statement that the owner of the cited mark consents to the registration of the applicant's mark, the agreement should also indicate the following:
- The goods or services are sufficiently dissimilar so that they are not likely to travel through the same channels of trade in the marketplace.
- There would be no likelihood of confusion in the public mind as a result of the contemporaneous use of the trademarks in the marketplace.
- The parties will do everything in their power to avoid the possibility of confusion in the marketplace.
- The two trademarks have co-existed over a period of time in the marketplace without any known instances of confusion.
V.13 Applicant's Failure to Reply
The applicant may fail to respond to an examiner's action at any time during the course of prosecution. If, at the end of the six-month period, a response has not been received, abandonment proceedings will be initiated, as provided by section 36 of the Trade-marks Act. The application will be deemed abandoned if the applicant fails to remedy the default within the time allowed in the notice sent to the applicant pursuant to the provisions of section 36 of the Trade-marks Act.
V.13.1 Section 36 — Abandonment of Applications
Applications may be abandoned voluntarily, or as a result of failure to respond to the Registrar's notice under section 36. A section 36 notice will be issued in any case where an applicant fails to respond to an examiner's action, thereby interrupting continued prosecution of the application. The notice states that, in the opinion of the Registrar, the applicant is in default in the prosecution of the application by reason of his/her failure to respond to the examiner's communication and that unless the default is remedied within two months from the date of the notice, the application will be deemed abandoned.
V.14 Extensions of time — Examiners' Reports and Section 36
(See also the practice notice entitled Extensions of Time in Examination)
A notice is added to each examiner's report stating that a full response is due within the stated time limit in order to avoid abandonment proceedings. The Trademarks Office will generally grant an applicant one extension of time of up to a maximum of six months to file a response to an examiner's report, if the request is justified. No requests for any further extensions of time will generally be considered.
Upon the expiration of twelve months from the initial date of the examiner's report, the Office will require that the applicant demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response to an examiner's report. The Office considers that a proper response consists of a response wherein all objections and/or requests raised in the examination report have been addressed.
If at the expiry of the twelve month period mentioned above the applicant fails to file a proper response or if the reasons provided are not considered to justify a further extension of time, the applicant will be considered in default in the prosecution of the application pursuant to provisions of section 36 of the Trade-marks Act and a notice of default will be issued.
The following are examples of what could amount to an exceptional circumstance that would justify a further extension of time.
Recent change in trademark agent
If there has been a very recent change in the trademark agent, the Registrar may grant a further extension of time allowing the new trademark agent to become familiar with the file.
Circumstances beyond the control of the person concerned
Examples of factors that could amount to exceptional circumstances beyond the control of the person concerned include illness, accident, death, bankruptcy or other serious and unforeseen circumstances.
There has been a very recent assignment of the trademark.
The copy of the registration certified by the office in which it was made has not yet been issued since the foreign application has yet to proceed to registration.
Citation pending application
If the cited co-pending and confusing mark is: possibly going to be abandoned within the next two months; is subject of opposition.
Citation registered mark
If the cited registered mark is subject to a section 45 proceeding.
If the applicant is negotiating for a consent from the holder of an official mark.
The following are examples of what could not amount to an exceptional circumstance and would not justify a further extension of time.
- The applicant is traveling and constantly out of the country, however will be in Canada in the upcoming months
- The business has not been active but will be starting up again shortly.
- The applicant is awaiting a foreign certified copy, however the subsection 16(2) claim is based on a foreign registration since the date of filing.
- The application contains an incomplete subsection 16(2) claim and the applicant is requesting more time to provide the certified copy.
- The foreign application has been abandoned and the applicant requests more time to file a new foreign application in its place.
- The agent is awaiting receipt of their client's instruction and has the intention to amend the application to add a subsection 16(2) claim.
- The applicant needs more time to commence use in the United States.
- The applicant is collecting evidence in support of a distinguishing guise.
- The applicant is having trouble collecting all the necessary information and documents required to prepare the required affidavit. It is difficult for the applicant to collect all the pertinent information and documents which date back from several years.
- The applicant is collecting evidence in order to claim the benefit of subsection 12(2) to overcome a paragraph 12(1)(b) objection.
V.15 Effect of Abandoned Trademark Applications
While conducting a search for confusing trademarks, examiners may come across some which could be confusing with pending applications. Examiners may consult the index for information of various sorts, but must remember that the abandoned applications are without status in the Trademarks Office. They are therefore irrelevant with respect to entitlement to registration between co-pending and confusing applications.
V.16 Letter of Refusal
Subsection 37(1) of the Trade-marks Act states the following:
- The Registrar shall refuse an application for the registration of a trademark if he is satisfied that
- the application does not conform to the requirements of section 30,
- the trademark is not registrable, or
- the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending,
- and where the Registrar is not so satisfied, he shall cause the application to be advertised in the manner prescribed.
Where the paragraph warning of refusal has been given in a examiner's report and the subsequent response by the applicant or agent has not convinced the examiner to withdraw the objection, and where no new arguments have been raised by the applicant or agent which would require a response by the examiner pursuant to the provisions of subsection 37(2) of the Trade-marks Act, the examiner will recommend to the Registrar that the application be refused.
If the Registrar agrees, the applicant will be notified by letter to that effect. The letter must be as explicit as possible so that the applicant is clearly aware of the reasoning behind the refusal decision. The letter must also draw attention to the provisions of section 56 of the Trade-marks Act, whereby the applicant may appeal the Registrar's decision to the Federal Court.
- Date modified: