Trade-marks Act
Registrability: s. 12
Registrable & Entitlement to
Register

Distinguish
 Is the mark registrable?
 This
 Who
is a characteristic of the mark
is entitled to registration?
 Who
is the owner of the mark
Registrability



Marks are generally registrable unless excluded
When trade-mark registrable – s. 12(1)
12 (1) Subject to section 13,
More restrictive rules for distinguishing guise
 Must have acquired secondary meaning, as in s. 12(2)
for mark


a trade-mark is registrable if it is not. . .
Marks Not Registrable

s.12 – Marks which are not registrable are not
inherently distinctive for reasons which can be
ascertained by the Registrar

Surnames, marks descriptive in French or English


Generic: the name of the wares in any language


12(c)
Mark / Quasi-mark owned by another
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12(a)(b)
12(d) - (i)
Functional marks
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Case-law
Functionality
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Functionality
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A mark may serve some functional purpose other than
identifying the source of the ware
Ie a distinctive shape makes a bottle easier to grasp
Case-law establishes that functionality is a ground
for opposition or refusal by Registrar


Functionality as a bar is not found expressly in the Act
Affirmed as a ground for invalidity in Kirkbi and Lego
Canada v Ritvik Holdings 2003 FCA 297, affm’d 2005
SCC 65
Generic


Generic mark
(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;
Inherently not distinctive
 Not registrable

Descriptive Marks


(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;
(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;
 Inherently not distinctive
 Normally describe the wares or the vendor
Acquired Meaning


A trade-mark that is descriptive or deceptively
misdescriptive is prima facie unregistrable
May be registered if it has in fact acquired
distinctiveness as a mark: s.12(2)

In which case it is registered only for the
geographical area in which it is distinct: s.32
Acquired Meaning


S.12(2) A trade-mark that is not registrable by reason of
paragraph (1)(a) or (b) is registrable 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
S.32 [In the case of a mark which is registrable under
s.12(2) or 13 (distinguishing guise)] (2) The Registrar shall
restrict the registration to the wares or services in
association with which the trade-mark is shown to have
been so used as to have become distinctive and to the
defined territorial area in Canada in which the trade-mark
is shown to have become distinctive
Acquired Meaning

Carling v Molson (”Canadian”)

Onus is on the party wishing to take advantage of
s.12(2) to show that the mark has acquired
distinctiveness
Deceptively Misdescriptive


12 (1) Subject to section 13, a trade-mark is
registrable if it is not
(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;
Deceptively Misdescriptive
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

The old act prohibited registration of a mark
which was “clearly misdescriptive”
The problem was that a mark which is clearly
misdescriptive may be very distinctive for that
very reason: eg “Orange grass” for grass seed for
green grass
Now it must be “deceptively” misdescriptive

Eg Kool One
Summary

Abercrombie provides a useful taxonomy
(1) generic – the name of the wares: shredded wheat
 (2) descriptive – descriptive of the wares: Canadian
beer
 (3) suggestive – Alpine beer
 Arbitrary (a real word applied out of context)
 (4) fanciful (not a real word – eg Exxon)

Summary

(1) Generic marks cannot be registered


While descriptive terms can acquire meaning, s.12(2)
does not make exception for the name of the wares
which are not registrable under s12(1)(c)
(2) Descriptive marks are prima facie
unregistrable: s.12(1)(b)

But can acquire secondary meaning, s12(2) If
application is made under s.12(2) registration will be
granted only with respect to defined territorial area
in which mark has acquired secondary meaning: s.32
Summary
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
(3) Suggestive marks are not descriptive and are
entitled to registration
(4) Fanciful or arbitrary marks are also entitled
to the registration

The only difference between suggestive and fanciful
marks is that it may be easier to establish
infringement because there will be no question that
the mark is being used as a mark rather than
descriptively
Examples

“Cool” is not descriptive of beer, only
suggestive

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“Golden” is descriptive of beer
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
Provenzano
Labatt v Molson
“Golden” had apparently acquired meaning, but
s.12(2) had not been argued
“Cool” is not misdescriptive, despite the fact
that “Kool one” beer is not permanently cold
Home Juice v Orange Maison


Illustration of a descriptive mark: Orange
Maison for orange juice
Note that the owner of Orange Maison was able
to rely on (now) s.12(2) to save the mark on the
basis of acquired meaning, but only within the
province of Quebec (s.32)
Noshery

A suggestive mark is not descriptive
Mark Owned by Another


12 (1) Subject to section 13, a trade-mark is
registrable if it is not
(d) confusing with a registered trade-mark;
Only registered mark
 If a mark is confusing with an unregistered mark it
may be registrable
 But only by the owner of the unregistered mark:
s.16

Associated Marks

15. (1) Notwithstanding section 12 or 14,
confusing trade-marks are registrable if the
applicant is the owner of all such trade-marks,
which shall be known as associated trade-marks.
Prohibited Marks & Variety
Names

(e) a mark of which the adoption is prohibited by
section 9 or 10;
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(f) a denomination the adoption of which is
prohibited by section 10.1;


S. 9 Prohibited marks – Red Cross/Crescent, National
Flags
S. 10 Mark which by usage has come to denote quality,
place of origin etc of wares eg “Canada Fancy”
Plant variety name under Plant Breeders’ Rights Act
Nor can these marks be used even as unregistered
marks: s.10.1, 11
Olympic Marks

(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
Exceptions for Olympic Committee and licensees
 Olympic athletes
 Prior users

Protected Geographical
Indication
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DOC – Cf. ‘Extended passing off’
(g) in whole or in part a protected geographical
indication, where the trade-mark is to be registered
in association with a wine not originating in a
territory indicated by the geographical indication;
and
(h) in whole or in part a protected geographical
indication, where the trade-mark is to be registered
in association with a spirit not originating in a
territory indicated by the geographical indication
Geographical Indications

Nor can protected geographical indications be
used as unregistered marks


S.11.14 /15
Geographical indications must be listed to be
protected
Procedure for listing is initiated by Minister
 Opportunity for objection
 S.11.12 / 13

Geographical Indications


Some indications are deemed generic
s. 11.18(3) Notwithstanding sections 11.14 and
11.15 and paragraphs 12(1)(g) and (h), nothing in
any of those provisions prevents the adoption, use
or registration as a trade-mark or otherwise, in
connection with a business, of the following
indications in respect of wines:


(a) Champagne; (b) Port; (c) Porto; (d) Sherry; (e)
Chablis;
Burgundy & Bourgogne were once deemed generic,
removed in 2004
Entitlement to Registration
Registration: s.16

You are entitled to registration if (s.16(1))
The mark is registrable (s. 12), and
 The mark yours


The mark is yours if
You have used it or propose to use it, and
 It is not confusing with someone else’s prior mark

Entitled to Registration

s.16(1)Any applicant who has filed an
application. . .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 . . . to secure its registration in respect of
those wares or services, unless
In respect of
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s.16(1) . . . to secure its registration in respect of
those wares or services,
A trade-mark is registered in respect of specific
wares and services only
. . .that he. . .has used in Canada or made known
in Canada in association with wares or services.
The mark must have been used or proposed use
by the applicant in association with those wares
or services
The Mark is Yours.

Three ways to establish the mark is yours
 Use or made known in Canada: s.16(1)
 Registered and used abroad: s.16(2)
 Proposed use: s.16(3)
Used or Made Known in Canada
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16. (1) . . .that he or his predecessor in title has
used in Canada or made known in Canada . . .
Use is sufficient
It is not necessary to establish a reputation
 Unless the mark is not inherently distinctive


Made known in Canada

E.g. through use in US
Registered and used abroad
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
16(2) . . .the applicant . . .has duly registered in
or for the country of origin of the applicant and
has used in association with wares or services. . .
Need not be known in Canada so long as
registered and used in applicant’s home country
Proposed Use
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
16(3) Any applicant who has filed an application
. . . for registration of a proposed trade-mark . . .
You may file an application for a proposed mark
you must use it before it is actually registered:
see s.40(2)
Application reserves the mark until you use it
 Time restrictions in s. 40

“Unless”

You are not entitled to register a mark which is
confusing with someone else’s prior mark
Prior registered marks
 Prior unregistered marks and name
 Prior applied for marks

Prior Registered Mark

12(1). . .a trade-mark is registrable if it is not (d)
confusing with a registered trade-mark

A mark that is confusing with a prior registered mark
is not registrable except by the owner of the prior
mark
 Associated marks
Prior Unregistered Mark or Trade
Name

Registrable, but only by owner of unregistered
mark

16(1) . . .unless at the date on which he. . .first so
used it. . .it was confusing with
(a) a trade-mark that had been previously used in Canada
or made known in Canada by any other person;
 (c) a trade-name that had been previously used in Canada
by any other person


Note that (a) includes unregistered trade-marks

See the definition of “trade-mark”
Prior Pending Mark
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Or a mark which is confusing with someone
else’s pending trade-mark
16(1)(b) a trade-mark in respect of which an
application for registration had been previously
filed in Canada by any other person; or
In effect, a first to file priority for registration
for new marks

This is why proposed mark reserves mark
Prior Pending Mark

First to file does not guarantee the registration
will issue
Lack of distinctiveness may prevent first to file from
gaining registration: see s. 38(2)(d)
 In which case no one is entitled to registration

Unless, unless
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Exception to “unless”
Entitlement unaffected by prior abandonded mark
16(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.
Registration Process

37 (1) The Registrar shall refuse an application
for the registration of a trade-mark if he is
satisfied that
(a) [the application is not in proper form]
 (b) the trade-mark is not registrable, [s.12] 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, [para (c) refers to
s.16(1)(b) only]

Registration Process

Even though the Registrar does not refuse the
application under s.37, the mark is not automatically
registered

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s.37(1) . . . and where the Registrar is not so satisfied, he
shall cause the application to be advertised in the
manner prescribed
It is advertised in the Trade-Marks Journal (an official
publication of the Office of the Registrar)

The Trade-marks Journal is regularly reviewed by trademark agents on their clients’ behalf, to determine
whether applications have been made for confusing
marks
Opposition

The advertisement process give other parties
two months to object

38 (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
Opposition - Registrability

Opposition is normally by an owner of a
conflicting mark
Some grounds of opposition are open only to the
owner of the opposing mark
 E.g. Prior use of a confusing mark or trade-name: s.
17

Opposition - Registrability

Opposition is allowed in addition to
examination for two reasons
The opponent typically has more at stake than the
Registrar
 The opponent may have more information than the
registrar
 Particularly with respect to unregistered marks

Opposition - Registrability


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The opponent may challenge on the basis that
the mark is not registrable notwithstanding that
the Registrar has already reviewed this issue
This allows the opponent to present new
arguments
And the opponent may appeal from a rejection
of its opposition

So the opponent had a chance to make the argument
re registrability before a court
Opposition

38(2) A statement of opposition may be based on any of the
following grounds:

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Grounds (a), (b) are also grounds for refusal by Registrar
under s. 37(1)(a),(b)
Para 38(2)(c) is similar to 37(1)(c), but broader


(a) [Form of the application]
(b) that the trade-mark is not registrable [s.12];
(c) that the applicant is not the person entitled to registration of the
trade-mark [s.16]; or
(d) that the trade-mark is not distinctive
Refers to s.16(a) & (c) (used name/mark) as well as (b) (prior
application)
No equivalent to (d) under 37(1)
Process

Note that the Registrar can refuse the mark
When the person is not entitled because the it is
confusing with a pending application: cf s.16(1)(b))
 When it is confusing with a registered mark (s.12)
 But not when it is confusing with an unregistered
mark or trade-name: s.16(1)(a)(c)

Process

Only the opponent can oppose on the basis of
s.16(1)(a),(c)
The Registrar has no way of knowing whether an
confusing unregistered mark exists
 And the opponent must be the owner of the
opposing mark to oppose on this basis: s.17

Opposition

Mark may lack distinctiveness because

It inherently lacks distinctiveness (eg generic mark)



s.12
It lacks distinctiveness in fact because it has been used by
more than one source: s. 38(2)(d)
38(2)(d) – lack of distinctiveness in fact, available only to
opponent



Registrar can refuse for confusion with registered mark: 12(d)
Or because generic etc (12(a)(b))
Opponent can oppose for confusion with unregistered mark
under s.38(2)(d)
Registration

After the period for opposition has expired (two
months after advertisement)



or after an opposition is decided in favour of the
applicant
The trade-mark is registered: ss.39,40
In respect of those wares for which the application
was made


Applicant must have used the mark in association with
those wares
Proposed mark is not registered until actually used
Prior User


Suppose the applicant was not entitled to
registration because the mark was confusing
with your unregistered mark
But you didn’t have a trade-mark agent scanning
the journal and you missed the opposition
period
Invalidity
Invalidity

A registration is invalid if the mark
Was unregistrable
 Is lacking distinctiveness
 Wasn’t the owner’s mark

Invalidity

18 (1) The registration of a trade-mark is invalid if




(a) the trade-mark was not registrable at the date of
registration,
(b) the trade-mark is not distinctive at the time
proceedings bringing the validity of the registration into
question are commenced, or
(c) the trade-mark has been abandoned,
and subject to section 17, it is invalid if the
applicant for registration was not the person
entitled to secure the registration
Entitlement


Only the owner of a prior mark can oppose on the
basis of entitlement: s17(1)
17(1) No application for registration of a trademark . . . shall be refused and no registration of a
trade-mark shall be expunged or amended or held
invalid on the ground of any previous use or
making known of a confusing trade-mark or tradename by a person other than the applicant for that
registration or his predecessor in title, except at the
instance of that other person or his successor in
title, . . .
Not Registrable / Not Entitled

18 (1) The registration of a trade-mark is invalid if
 (a) the trade-mark was not registrable at the date of
registration,
 and subject to section 17, it is invalid if the applicant
for registration was not the person entitled to secure
the registration

These are the same grounds as for opposition

What is the difference?
 (So far as the prior user is concerned)
Section 17

The owner of a prior mark only has 5 years to
object on the basis for entitlement: s17(2)
Five Year re Entitlement

17(2) In proceedings commenced after the
expiration of five years from the date of
registration of a trade-mark . . .no registration
shall be expunged or amended or held invalid on
the ground of the previous use or making
known referred to in subsection (1), unless it is
established that the person who adopted the
registered trade-mark in Canada did so with
knowledge of that previous use or making
known
Within 5 year limit

Suppose prior user acts within 5 year limit


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What is the difference between invalidity and
opposition?
Burden of proof
Costs
Within 5 year limit

Burden of proof
 Under s.16 the applicant has the burden of
showing entitlement to registration
 Under s.17 the party attacking the mark has
the burden of showing prior use

17(1) . . . and the burden lies on that other person . . .to
establish that he had not abandoned the confusing
trade-mark or trade-name at the date of advertisement
of the applicant’s application.
Within 5 year limit

Costs
No costs awarded on opposition
 Costs follow the cause in invalidity


Should you wait for costs reasons, if you’re
pretty sure you can win?
Distinctiveness


"distinctive", in relation to a trade-mark, means a trademark 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;
Distinctiveness is not a condition for registrability



Though some specific grounds for lack of distinctiveness are
E.g. generic
Distinctiveness is a ground for invalidity or opposition

This means that the opponent but not the registrar can object
on this basis
Distinctiveness

A mark which is inherently not distinctive (eg
descriptive) may acquire distinctiveness through
use

Cf Secondary meaning in passing off
Distinctiveness


Conversely, a mark which is distinctive may lose
distinctiveness and become invalid: s18(1)(b)
18 (1) The registration of a trade-mark is invalid
if (b) the trade-mark is not distinctive at the time
proceedings bringing the validity of the
registration into question are commenced, or

This can happen if the owner does not police the use
of the mark by others; ie the owner allows others to
use its mark as their own mark
Examples
Examples



All examples assume same mark, same wares
Mark otherwise registrable
Consider
Can A successfully oppose B’s registration?
 Can A successfully bring an action for invalidity
against B (if A misses opposition period)
 If A can oppose / invalidate B’s registration, can A
register?

Example 1

A
1st user
 Established reputation


B
2nd user
 No reputation


B files application 1st
Example 2

A
2nd user
 Established reputation


B
1st user
 No reputation


B files application 1st
Trade-marks Act v Passing Off
Registered v Unregistered Mark



A passing off action cannot be sustained if the
defendant’s mark is registered
What recourse does the plaintiff have?
Is either “Molson Export” or “Oland Export”
distinctive?
Act v Passing Off



“Oland Export Ale” is a registered mark
Can Molson bring a passing off action against
Olands based on “Molson Export”?
No: A registered marks is a “complete answer”
to an action for passing off
The owner has a positive right to use the mark
 Not just a right to exclude others
