"Distinctive",
"Distinctive", in relation to a trade-mark, means a trade-mark that
actually distinguishes the wares or services in association with which
it is used by its owner, from the wares or services of others, or is
adapted so to distinguish them.
Form of Trademark Application,
Section 30 of the Trademarks Act provides:
An applicant for the registration of a trade-mark shall file with the
Registrar an application containing
(a) a statement in ordinary commercial terms of the specific wares or
services in association with which the mark has been or is proposed to
be used;
(b) in the case of a trade-mark that has been used in Canada, the
date from which the applicant or his named predecessors in title, if
any, have so used the trade-mark in association with each of the general
classes of wares or services described in the application;
(c) in the case of a trade-mark that has not been used in Canada but
is made known in Canada, the name of a country of the Union in which it
has been used by the applicant or his named predecessors in title, if
any, and the date from and the manner in which the applicant or named
predecessors in title have made it known in Canada in association with
each of the general classes of wares or services described in the
application;
(d) in the case of a trade-mark that is the subject in another
country of the Union of a registration or an application for
registration by the applicant or his named predecessor in title on which
the applicant bases his right to registration, particulars of the
application or registration and, if the trade-mark has neither been used
in Canada nor made known in Canada, the name of a country in which the
trade-mark has been used by the applicant or his named predecessor in
title, if any, in association with each of the general classes of wares
or services described in the application;
(e) in the case of a proposed trade-mark, a statement that the
applicant, by itself or through a licensee, or by itself and through a
licensee, intends to use the trade-mark in Canada;
(f) in the case of a certification mark, particulars of the defined
standard that the use of the mark is intended to indicate and a
statement that the applicant is not engaged in the manufacture, sale,
leasing or hiring of wares or the performance of services such as those
in association with which the certification mark is used;
(g) the address of the applicant's principal office or place of
business in Canada, if any, and if the applicant has no office or place
of business in Canada, the address of his principal office or place of
business abroad and the name and address in Canada of a person or firm
to whom any notice in respect of the application or registration may be
sent, and on whom service of any proceedings in respect of the
application or registration may be given or served with the same effect
as if they had been given to or served on the applicant or registrant
himself;
(h) unless the application is for the registration only of a word or
words not depicted in a special form, a drawing of the trade-mark and
such number of accurate representations of the trade-mark as may be
prescribed; and
(i) a statement that the applicant is satisfied that he is entitled
to use the trade-mark in Canada in association with the wares or
services described in the application.
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"Registrable"
trademarks,
A trade-mark is registrable if it is not:
(a) a word that is primarily merely the name or the surname of an
individual who is living or has died within the preceding thirty years
(unless 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);
(b) whether depicted, written or sounded, either clearly descriptive
or deceptively misdescriptive in the English or French language of the
character or quality of the wares 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 (unless 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);
(c) the name in any language of any of the wares or services in
connection with which it is used or proposed to be used;
(d) confusing with a registered trade-mark;
(e) a mark of which the adoption is prohibited by section 9 or
10
of the Trade-marks Act [these
sections are reproduced below ]; or
(f) a denomination the adoption of which is prohibited by section 10.1
Trade-marks Act [this
section is reproduced below ].
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Section 9 provides:
(1) No person shall adopt in connection with a business, as a
trade-mark or otherwise, any mark consisting of, or so nearly resembling
as to be likely to be mistaken for,
(a) the Royal Arms, Crest or Standard;
(b) the arms or crest of any member of the Royal Family;
(c) the standard, arms or crest of His Excellency the Governor
General;
(d) any word or symbol likely to lead to the belief that the wares or
services in association with which it is used have received, or are
produced, sold or performed under, royal, vice-regal or governmental
patronage, approval or authority;
(e) the arms, crest or flag adopted and used at any time by Canada or
by any province or municipal corporation in Canada in respect of which
the Registrar has, at the request of the Government of Canada or of the
province or municipal corporation concerned, given public notice of its
adoption and use;
(f) the emblem of the Red Cross on a white ground, formed by
reversing the federal colours of Switzerland and retained by the Geneva
Convention for the Protection of War Victims of 1949 as the emblem and
distinctive sign of the Medical Service of armed forces and used by the
Canadian Red Cross Society, or the expression "Red Cross" or "Geneva
Cross";
(g) the emblem of the Red Crescent on a white ground adopted for the
same purpose as specified in paragraph (f) by a number of Moslem
countries;
(h) the equivalent sign of the Red Lion and Sun used by Iran for the
same purpose as specified in paragraph (f);
(h.1) 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;
(i) any territorial or civic flag, or any national, territorial or
civic arms, crest or emblem, of a country of the Union, if the flag,
arms, crest or emblem is on a list communicated under article 6ter of
the Convention and publicly given by the Registrar;
(i.1) any official sign or hallmark indicating control or warranty
adopted by a country of the Union, if the sign or hallmark is on a list
communicated under article 6ter of the Convention and publicly given by
the Registrar;
(i.2) any national flag of a country of the Union;
(i.3) any armorial bearing, flag or other emblem, or any abbreviation
of the name, of an international intergovernmental organization, if the
armorial bearing, flag, emblem or abbreviation is on a list communicated
under article 6ter of the Convention and publicly given by the
Registrar;
(j) any scandalous, obscene or immoral word or device;
(k) any matter that may falsely suggest a connection with any living
individual;
(l) the portrait or signature of any individual who is living or has
died within the preceding thirty years;
(m) the words "United Nations" or the official seal or emblem of the
United Nations;
(n) any badge, crest, emblem or mark
(i) adopted or used by any of Her Majesty's Forces as defined in the
National Defence Act,
(ii) of any university, or
(iii) adopted and used by any public authority, in Canada as an
official mark for wares or services,
in respect of which the Registrar has, at the request of Her Majesty
or of the university or public authority, as the case may be, given
public notice of its adoption and use;
(n.1) any armorial bearings granted, recorded or approved for use by
a recipient 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; or
(o) 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.
(2) Nothing in this section [Section 9] prevents the adoption, use or
registration as a trade-mark or otherwise, in connection with a
business, of any mark
(a) described in subsection (1) with the consent of Her Majesty or
such other person, society, authority or organization as may be
considered to have been intended to be protected by this section; or
(b) consisting of, or so nearly resembling as to be likely to be
mistaken for
(i) an official sign or hallmark mentioned in paragraph (1)(i.1),
except in respect of wares that are the same or similar to the wares in
respect of which the official sign or hallmark has been adopted, or
(ii) an armorial bearing, flag, emblem or abbreviation mentioned in
paragraph (1)(i.3), unless the use of the mark is likely to mislead the
public as to a connection between the user and the organization.
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Section 10 provides:
Where any mark has by ordinary and bona fide commercial usage become
recognized in Canada as designating the kind, quality, quantity,
destination, value, place of origin or date of production of any wares
or services, no person shall adopt it as a trade-mark in association
with such wares or services or others of the same general class or use
it in a way likely to mislead, nor shall any person so adopt or so use
any mark so nearly resembling that mark as to be likely to be mistaken
therefor.
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Section 10.1 provides:
Where a denomination must, under the Plant Breeders' Rights Act, be
used to designate a plant variety, no person shall adopt it as a
trade-mark 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 therefor.
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The "person entitled" to
register a trademark:
Section 16 provides that:
(1) Any applicant who has filed an application in accordance with section
30 for registration of a trade-mark that is registrable
and that he or his predecessor in title has used in Canada or made known
in Canada in association with wares or services is entitled, subject to
section
38 , to secure its registration in respect of those wares or
services, unless at the date on which he or his predecessor in title
first so used it or made it known it was confusing with
(a) a trade-mark that had been previously used in Canada or made
known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration
had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other
person.
(2) Any applicant who has filed an application in accordance with section
30 for registration of a trade-mark that is registrable
and that he or his predecessor in title has duly registered in his
country of origin and has used in association with wares or services is
entitled, subject to section
38 , to secure its registration in respect of the wares or services
in association with which it is registered in that country and has been
used, unless at the date of filing of the application in accordance with
section
30 it was confusing with
(a) a trade-mark that had been previously used in Canada or made
known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration
had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other
person.
(3) Any applicant who has filed an application in accordance with section
30 for registration of a proposed trade-mark that is registrable
is entitled, subject to sections 38
and 40 ,
to secure its registration in respect of the wares or services specified
in the application, unless at the date of filing of the application it
was confusing with
(a) a trade-mark that had been previously used in Canada or made
known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration
had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other
person.
(4) The right of an applicant to secure registration of a registrable
trade-mark is not affected by the previous filing of an application for
registration of a confusing trade-mark by another person, unless the
application for registration of the confusing trade-mark was pending at
the date of advertisement of the applicant's application in accordance
with section
37 .
(5) The right of an applicant to secure registration of a registrable
trade-mark is not affected by the previous use or making known of a
confusing trade-mark or trade-name by another person, if the confusing
trade-mark or trade-name was abandoned at the date of advertisement of
the applicant's application in accordance with section
37 .
Section 37 provides that:
(1) The Registrar shall refuse an application for the registration of
a trade-mark if he is satisfied that
(a) the application does not conform to the requirements of section
30 ,
(b) the trade-mark is not registrable
, or
(c) the applicant is not the person
entitled to registration of the trade-mark because it is confusing
with another trade-mark 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.
(2) 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.
(3) Where the Registrar, by reason of a registered trade-mark, is in
doubt whether the trade-mark claimed in the application is registrable
, he shall, by registered letter, notify the owner of the registered
trade-mark of the advertisement of the application.
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Section 38 provides that:
(1) Within two months after the advertisement of an application for
the registration of a trade-mark, any person may, on payment of the
prescribed fee, file a statement of opposition with the Registrar.
(2) A statement of opposition may be based on any of the following
grounds:
(a) that the application does not conform to the requirements of section
30 ;
(b) that the trade-mark is not registrable
;
(c) that the applicant is not the person
entitled to registration of the trade-mark ; or
(d) that the trade-mark is not distinctive
.
(3) A statement of opposition shall set out
(a) the grounds of opposition in sufficient detail to enable the
applicant to reply thereto; and
(b) the address of the opponent's principal office or place of
business in Canada, if any, and if the opponent has no office or place
of business in Canada, the address of his principal office or place of
business abroad and the name and address in Canada of a person or firm
on whom service of any document in respect of the opposition may be made
with the same effect as if it had been served on the opponent himself.
(4) If the Registrar considers that the opposition does not raise a
substantial issue for decision, he shall reject it and shall give notice
of his decision to the opponent.
(5) If the Registrar considers that the opposition raises a
substantial issue for decision, he shall forward a copy of the statement
of opposition to the applicant.
(6) The applicant shall file a counter statement with the Registrar
and serve a copy on the opponent in the prescribed manner and within the
prescribed time after a copy of the statement of opposition has been
served on the applicant.
(7) Both the opponent and the applicant shall be given an
opportunity, in the prescribed manner, to submit evidence and to make
representations to the Registrar unless
(a) the opposition is withdrawn or deemed under subsection (7.1) to
have been withdrawn; or
(b) the application is abandoned or deemed under subsection (7.2) to
have been abandoned.
(7.1) The opposition shall be deemed to have been withdrawn if, in
the prescribed circumstances, the opponent does not submit either
evidence under subsection (7) or a statement that the opponent does not
wish to submit evidence.
(7.2) The application shall be deemed to have been abandoned if the
applicant does not file and serve a counter statement within the time
referred to in subsection (6) or if, in the prescribed circumstances,
the applicant does not submit either evidence under subsection (7) or a
statement that the applicant does not wish to submit evidence.
(8) After considering the evidence and representations of the
opponent and the applicant, the Registrar shall refuse the application
or reject the opposition and notify the parties of the decision and the
reasons for the decision.
Section 40 provides that:
(1) When an application for registration of a trade-mark, other than
a proposed trade-mark, is allowed, the Registrar shall register the
trade-mark and issue a certificate of its registration.
(2) When an application for registration of a proposed trade-mark is
allowed, the Registrar shall give notice to the applicant accordingly
and shall register the trade-mark and issue a certificate of
registration on receipt of a declaration that the use of the trade-mark
in Canada, in association with the wares or services specified in the
application, has been commenced by
(a) the applicant;
(b) the applicant's successor in title; or
(c) an entity that is licensed by or with the authority of the
applicant to use the trade-mark, if the applicant has direct or indirect
control of the character or quality of the wares or services.
(3) An application for registration of a proposed trade-mark shall be
deemed to be abandoned if the Registrar has not received the declaration
referred to in subsection (2) before the later of
(a) six months after the notice by the Registrar referred to in
subsection (2), and
(b) three years after the date of filing of the application in
Canada.
(4) Registration of a trade-mark shall be made in the name of the
applicant therefor or his transferee, and the day on which registration
is made shall be entered on the register, and the registration takes
effect on that day.
(5) For the purposes of subsection (3), section 34 does not apply in
determining when an application for registration is filed.
