Trade-marks Act Registrability: s. 12

Trade-marks ActRegistrability: s. 12

Registrable & Entitlement to Register

Distinguish Is the mark registrable?

This is a characteristic of the mark Who 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

12(a)(b) Generic: the name of the wares in any language

12(c) Mark / Quasi-mark owned by another

12(d) - (i) Functional marks

Case-law

Functionality Functionality

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

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 (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 Provenzano

“Golden” is descriptive of beer 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 registrableBut 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; 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” (f) a denomination the adoption of which is

prohibited by section 10.1; 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

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 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

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

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 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 markAssociated 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 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 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 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

trade-mark 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 registrarParticularly with respect to

unregistered marks

Opposition - Registrability

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: (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

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 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 trade-

mark . . . 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 trade-name 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 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

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;

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