2018 Trademark Agent Exam - Paper A (Pre-Advertisement)

Cite applicable authority and test for what defines a "public authority".

- A significant degree of control must be exercised by the appropriate government over the activities of the body. - The activities of the body must benefit the public. - Ontario Association of Architects v. Association of Architectural Technologists of Ontario (2002), 19 C.P.R. (4th) 417 (FCA) OR Trademarks Examination Manual IV.10.10.2.1 - followed by Canada Post Corporation v. USPS (2008)

Name two options for overcoming an objection on the basis of a registered s.9 official mark. Cite applicable authority.

- not confusing *because the applied for mark does not consist of, or so nearly resemble the official mark as to be likely to be mistaken for it, and should be allowed* s. 9(2) of Act *excepted uses* - obtain consent from government actor pursuant to s. 9(2)(a) of the Act *excepted uses* - *Always also cite generally the Trademarks Office Examination Manual.*

What are 4 options for overcoming a confusion citation in an Examiner's Report?

1. Seek to cancel for non-use pursuant to s. 45 2. Contact owner and seek consent 3. Contact owner and seek assignment or purchase registration 4. Argue that the 'difference in the marks as a whole in appearance, sound, and idea suggested are such that there is no likelihood of confusion between the marks'

Impermissible extensions of time?

1. Third extension for certified copy of foreign registration 2. Amendment to add a claim

What are acceptable statements of goods and services pertaining to pharmaceuticals in terms of naming specific diseases?

Acceptable - Naming the specific disease, disorder or condition In general, naming the specific disease is acceptable, for example: pharmaceutical preparations for the treatment of viral diseases, namely herpes, hepatitis, Acquired Immune Deficiency Syndrome (AIDS); pharmaceutical preparations for the treatment of neurological diseases, namely, Alzheimer's, Huntington's Disease, cerebral palsy; pharmaceutical preparations for the treatment of the central nervous system, namely encephalitis, epilepsy, Alzheimer's, cerebral palsy, Parkinson's disease; pharmaceutical preparations for the treatment of psychiatric diseases, namely schizophrenia; pharmaceutical preparations for use in oncology; pharmaceutical preparations for the treatment of cancer; pharmaceutical preparations for the treatment of varicose veins; pharmaceutical preparations for the treatment of carpal tunnel syndrome; pharmaceutical preparations for the treatment of headaches;

What are acceptable statements of goods and services pertaining to pharmaceuticals in terms of naming groups of diseases?

Acceptable statements - In some instances, naming groups or types of diseases, disorders or conditions In addition, there are some situations where types of diseases or disorders are considered acceptable; where they encompass a group of diseases/disorders which (a) exhibit similar symptoms and require similar pharmaceutical treatment, and/or (b) restrict them selves to a particular area of the body such that one could appropriately assess for descriptiveness, confusion and ambit of protection (the three fundamental principals set out above for determining acceptability of goods and services). For example, the following statements of goods are considered acceptable: pharmaceutical preparations for the treatment of infectious diseases, namely respiratory infections, eye infections; pharmaceutical preparations for the treatment of inflammatory diseases, namely inflammatory bowel diseases, inflammatory connective tissue diseases; pharmaceutical preparations for the treatment of psychiatric diseases, namely mood disorders, anxiety disorders, cognitive disorders; pharmaceutical preparations for the treatment of neurological disorders, namely, brain injury, spinal cord injury, seizure disorders; pharmaceutical preparations for the treatment of the central nervous system, namely, central nervous system infections, brain diseases, central nervous system movement disorders, ocular motility disorders, spinal cord diseases; pharmaceutical preparations for the treatment of immunologic diseases, namely, autoimmune diseases, immunologic deficiency syndromes; pharmaceutical preparations for use in dermatology, namely, dermatitis, skin pigmentation diseases, sexually transmitted diseases; pharmaceutical preparations for the treatment of genitourinary diseases, namely urological diseases, infertility, sexually transmitted diseases, inflammatory pelvic diseases; pharmaceutical preparations for the treatment of the musculo-skeletal system, namely connective tissue diseases, bone diseases, spinal diseases, back pain, fractures, sprains, cartilage injuries; pharmaceutical preparations for use in ophthalmology; pharmaceutical preparations for the treatment of dental and oral diseases; pharmaceutical preparations for use in gastroenterology; pharmaceutical preparations for the treatment of the respiratory system; pharmaceutical preparations for use in ocular disorders; pharmaceutical preparations for the treatment of cardiovascular diseases;

What are acceptable statements of goods and services pertaining to pharmaceuticals i terms of naming types of medication?

Acceptable statements - Naming the type of medication In general, naming the specific type of medication is acceptable, where such medication is designed to combat particular symptoms, notwithstanding the fact that its use may cut across a number of diseases. For example, the following are acceptable: pharmaceutical preparations, namely, acne medication, allergy medication, antacids, anthelmintics, antiarrhythmics, antibiotic creams and ointments, antibiotics, anticoagulants, anticonvulsants, antidepressants, antiemetics, antiflatulants, antihistamines, antihypertensives anti-infectives, anti-inflammatories, antiparasites, antivirals, burn relief medication, calcium channel blockers, central nervous system depressants, central nervous system stimulants, cough treatment medication, diarrhea medication, fungal medications, gastro-intestinal pharmaceutical preparations, glaucoma agents, hydrocortisone, hypnotic agents, sedatives, etc. Note: In light of the constant progress in medical research and the rapidly growing pharmaceutical trade, each application must be examined on its own merits to determine whether in the present medical circumstances, a disease, disorder, condition, or group of diseases, or type of medication, will be considered sufficiently specific to satisfy the requirements of paragraph 30(a) of the Trade-marks Act.

Name this case: For there to be use of a trademark in Canada, there must be advertising of the mark in Canada and the services must be performed in Canada, or be available to be performed in Canada.

Champagne Moet & Chandon v. Ridout Wines Ltd./Les Vins Ridout Ltee (1983), 77 C.P.R. (2d) 63

What general rules apply to Naming Date of First Use or Making Known — Paragraphs 30(b) or (c)

Consistency in the classification and grouping of goods or services into classes is extremely important as regards the date of first use of those goods or services. When an applicant seeks to register a trademark that has been used or made known in Canada, it is advantageous to specify the earliest date of use or making known which can be substantiated in association with the goods or services falling within each general class.

2 grounds for abandonment of proposed use application that has been allowed?

Declaration of Use not filed 6 months after Notice of Allowance DOU not received 3 years post filing date

One way to circumvent deadline in application with an additional basis of foreign prior use where still waiting on evidence? Cite applicable authority.

Delete pursuant to Rule 30 of regulations, proceed based only on prior use in Canada which you have evidence for. 47(1) Act

3 grounds for refusal of trademark application

Doesn't conform to s. 30 Not registrable (s.12) applicant not entitled to registration because confusing with another applied for trademark (s. 16, Elite Jewels)

Upon dissolution of a partnership, what needs to be done to formally dissociate marks?

File an assignment from partnership to individuals Request dissociation Indicate respective marks unlikely to cause confusion

What rules apply to trademark applicants whom are associations?

II.5.1.3 Associations Associations that are legal entities (i.e., lawful associations) may acquire trademark rights either in association with services performed for members or for goods or services used in commerce. The full name of the association and full post office address of its place of business must be set out.

Can goods or services in a trademark application be broadened?

II.5.4.1 Broadening of Goods or Services It is important to note that the statement of goods or services made in the initial application may later be further specified. However, Rule 31(e) of the Trade-marks Regulations prohibits an amendment to an application that would change the statement of goods or services so as to be broader than the statement of goods or services contained in the application at the time the application was filed.

What does it mean to describe goods or services in 'ordinary commercial terms'?

II.5.4 Description of Specific Goods or Services in Ordinary Commercial Terms — Paragraph 30(a) Paragraph 30(a) of the Trade-marks Act states that an application for a trademark must contain "a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used". A representative listing of acceptable goods and services that are considered to be ordinary commercial terms for specific goods or services pursuant to paragraph 30(a) of the Trade-marks Act can be found in the Goods and Services Manual. For goods or services not found in the Goods and Services Manual, the acceptable listings in the Goods and Services Manual can be used to indicate by analogy the kinds of statements that would also be acceptable to describe similar goods or services. A statement of goods or services is acceptable if it as specific as, or more specific than, a related or similar listing. II.5.4.a Ordinary Commercial Terms Pursuant to paragraph 30(a) of the Trade-marks Act, a statement of goods or services must be "in ordinary commercial terms". A statement of goods or services is considered to be in ordinary commercial terms where research discloses that the goods and services are set out as they are customarily referred to in the trade, where similar language and scope has been commonly used by others in the same industry to describe the applicant's goods or services. See Dubiner v. Heede International Ltd. (1975), 23 C.P.R. (2d) 128 and Mövenpick-Holding AG v. Sobeys Capital Incorporated, 2010 TMOB 41. Moreover, simply because a statement of goods or services can be understood does not mean that it is a description that is customarily used in the trade. See Decra-Loc Canada Ltd. v. Pave Tech Inc. (1995), 61 C.P.R. (3d) 553. Examiners will conduct research to determine whether there are numerous commercial uses of the description of goods and services in question that would demonstrate that they are described as they normally would be in the trade. Where ordinary commercial terms cannot be found, the statement of goods or services must be clear and concise. Technical, lengthy or ambiguous descriptions of the characteristics of the goods or services are not acceptable. The statement of goods or services must be understood in the trade to describe the goods and services of the applicant. Registered trademarks cannot be used in statements of goods or services since they are not considered to be in ordinary commercial terms. II.5.4.b Specific Goods or Services Goods or services in ordinary commercial terms must also be "specific" pursuant to paragraph 30(a) of the Trade-marks Act. For example, while "clothing" is an ordinary commercial term, it is not specific, whereas "exercise clothing" is considered to be specific since the type of clothing has been specified. At times, in order to specifically define a good, the area of use of the good will be required. For example, "catalysts" is an insufficiently defined good. However "catalysts for use in oil processing" or "catalysts for use in the manufacture of industrial chemicals", are both specifically defined areas of use for "catalysts" and render the goods acceptable. This becomes especially important in cases where a trade term can have two completely different meanings, such as "crimping irons" which can be used for hair but also for mending or molding leather or iron. Similarly, services in ordinary commercial terms, such as "consulting", may be specified by indicating the field of use, such as "consulting in the field of workplace safety". While a statement of services may be more difficult to specify than a statement of goods, paragraph 30(a) of the Trade-marks Act requires some specificity in association with services where it is reasonable to expect that a more specific statement of services in ordinary commercial terms can be provided by an applicant. See Sentinel Aluminium Products Co. v. Sentinel Pacific Equities Ltd. (1983), 80 C.P.R. (2d) 201. There are no provisions in the Act to limit services to those which are not "incidental" or "ancillary" to the sale of goods provided that the services are not a normal contractual requirement or within the normal expectation of the purchaser in connection with the sale of goods. See Kraft Ltd. v. Registrar of Trade Marks (1984), 1 C.P.R. (3d) 457. However, services must offer a benefit to a third party in order to be acceptable pursuant to paragraph 30(a) of the Trade-marks Act. Merely making the public aware of the applicant's goods does not provide a real service to the public since the only person who would benefit is the applicant. See Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528.The following three-part test will be considered in determining whether the statement goods or services is considered to be "specific" within the meaning of paragraph 30(a) of the Trade-marks Act: Are the goods or services sufficiently specific so that it is possible to assess whether paragraph 12(1)(b) of the Trade-marks Act applies? A mark that clearly describes a character or quality of the goods or services is not registrable. Are the goods or services sufficiently specific to ensure that the applicant will not have an unreasonably wide ambit of protection? For example, goods described as "computer software", without further specification, would give the applicant an unreasonably wide ambit of protection. Are the goods or services sufficiently specific so that it is possible to assess confusion? A mark that is confusingly similar to a registered trademark or a pending trademark is not registrable.

Parts, fittings?

II.5.4.7 Parts and Fittings In general, "parts" and "fittings" are acceptable if the goods for which the "parts" and "fittings" are intended are acceptable pursuant to paragraph 30(a) of the Trade-marks Act. For example, "automobile parts" and "dish washer fittings" would be acceptable since "automobiles" and "dish washers" are each considered to be ordinary commercial terms for specific goods.

What is the applicable time period for use of a name under s.12(1)(a)

Individual living or dead less than *thirty years*

What is a s. 45 proceeding based on?

Lack of use prior three years with no justification

Is block letter and stylized font of the same word a significant alteration of the distinctive character of the mark?

No

Do the following qualify as public authorities? Exclusively Canadian universities, or charities registered before Revenue Canada? Cite applicable authority.

No and no. S. 9!

Are specimens required to file a Canadian trademark application? Cite applicable authority. Describe what they must be if the application depicts a mark that is coloured.

No, s. 29(c) of the Regulations. The mark specimen must be the *mark as used*, thus it must contain the colour red as it would be used in commerce.

Name this case: Section 10 prevents a single trader from having a monopoly over a mark that is common to the trade and well understood as designating a particular quality of wares or services.

Orkin Exterminating Co. v. Pestco of Canada (1985) 5 CPR (3d) 433 (Ont. CA)

Name this case: An application based originally on proposed use may not be amended to claim a date of first use in Canada as such an amendment would be contrary to Rule 31(d).

Porter v. Don the Beachcomber (1966), 48 C.P.R. 280

What authority pertains to gold jewellery?

Precious metals marketing act.

What are the minimum information requirements you must advise your client to provide in order to obtain a filing date (i.e. strategically obtain priority for their trademark filing)? Cite applicable authority.

S. 30 of the Act. - statement in ordinary commercial terms of goods/services - date of first use (see Practice Notice) - address of applicant's personal office or place of business - *registration number of foreign application and all particulars, s. 30(d)* - certified copy of registration and $50 fee - *Always also cite generally the Trademarks Office Examination Manual.*

What are best practices and minimum requirements for dates of first use in trademark filing bases on the basis of prior use, rather than intention to use? Cite applicable authority.

See Practice Notice - "Specific Date of First Use". Best practice: I advise my clients to file their trademarks listing a specific date, month, and year of first use to avoid subsequent expungement on this basis, given that this is a strict requirement. Minimum threshold: I advise my clients that if the mark is filed without a date, the last day of the specified month will be used as the effective date for determining entitlement in cases of confusion, thus it is best to specify an earlier date if one can be provided with a degree of confidence. If it is only the year, in the absence of a month, the only latitude granted (which is very little) will be December 31st of that year. Thus, I advise my clients to protect their own interests in the event of an expungement proceeding, or an entitlement inquiry in the context of a confusion analysis, to exercise as high a degree of specificity as they can confidently muster in determining their date of first use.

Name this case: If a foreign trademark owner whose mark is not use in Canada can establish goodwill and reputation in its trademark in Canada, it may be able to prevent the adoption of a confusingly similar mark, in Canada even if the foreign mark has not been used in Canada.

TCC Holdings Inc. v. Families as Support Teams Society, 2014 FC 830

Pre-examination process

The entire processing of an application from the time of filing to the time of its registration (or, alternatively, refusal or abandonment) involves many different operational units of the Trademarks Office. The majority of trademark applications are filed electronically. The others arrive in the departmental mail room where they are date stamped and then forwarded to the CIPO Finance and Administration Directorate which is responsible for receiving and coding the appropriate fee. The application is transferred to the Formalities Section where it is assigned a file number. The application is reviewed to ensure that the filing requirements of Rule 25 of the Trade-marks Regulations have been met and, if so, it is assigned a filing date. The application is then formalized and entered into the database and the electronic index. Receipt of the application is then acknowledged. The application is then transferred to the Examination Section where it is searched and examined.

*IMportant*: what consitutes 'use' of a trademark?

The concept of use is important in order to establish a person's right to registration of a trademark and to ensure maintenance of that registration once obtained. See paragraph 18(1)(c) and section 45 of the Trade-marks Act. Section 2 of the Trade-marks Act defines "use" in relation to a trademark to mean "any use that by section 4 is deemed to be a use in association with goods or services." Pursuant to subsection 50(1) of the Trade-marks Act, use accrues to the applicant if, under certain conditions, use of the trademark is by a licensee. Wherever applicable, a predecessor in title must be named, indicating previous ownership. For example, in order to establish that use of the applicant's trademark in Canada has been continuous, the applicant must provide a list of all predecessors in title in descending order to cover the period from the date of first use to the present. Subsection 4(1) states that "a trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred." As the words "normal course of trade" imply, the use must be by way of a normal commercial transaction. See the following cases: Gordon A. MacEachern Ltd. v. National Rubber Co. Ltd. (1963), 41 C.P.R. 149. Union Electric Supply Co. Ltd. v. Registrar of Trade Marks (1982), 63 C.P.R. (2d) 179. The word "trade" in subsection 4(1) contemplates some payment or exchange for goods supplied. Free distribution of promotional material or advertising gimmicks displaying the mark may not be considered trade use. See the following cases: C.I.S. Ltd. v. Sherren (1978), 39 C.P.R. (2d) 251 at 257-258. Joseph E. Seagram & Sons Ltd. v. Corby Distilleries Ltd. (1978), 42 C.P.R. (2d) 264 at 267-268 (following Hospital World Trade Mark [1967] R.P.C. 595 at 598-599) Ports International Ltd. v. Registrar of Trade Marks (1983), 79 C.P.R. (2d) 191 at 193. Subsection 4(2) of the Trade-marks Act states that "a trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services." This implies that services are in fact being provided or offered in Canada. Consequently services that are advertised in Canada must actually be performed in Canada. See the following cases: Porter v. Don the Beachcomber (1966), 48 C.P.R. 280 at 287. Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974), 16 C.P.R. (2d) 97 at 109. There is no definition of "services" in the legislation. Consequently, there is no distinction between primary, incidental or ancillary services. From the case law it would seem that as long as some members of the public receive a benefit from the activity, it may be considered a service. See the following cases: Kraft Ltd. v. Registrar of Trade Marks (1984), 1 C.P.R. (3d) 457. Carling O'Keefe Breweries of Canada Ltd. - Les Brasseries Carling O'Keefe du Canada Ltée trading as Carling O'Keefe Breweries v. Anheuser-Busch, Inc. (1985), 4 C.P.R. (3d) 216. Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528. Subsection 4(3) of the Trade-marks Act states that "a trademark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods." It has been stated that in the context of the Trade-marks Act as a whole, the words "exported from Canada" must be taken to mean "sent from Canada to another country in the way of commerce", or "transported from Canada to another country in the course of trade". See the following cases: Molson Companies Ltd. v. Moosehead Breweries Ltd. (1990), 32 C.P.R. (3d) 363 at 372-373. National Sea Products Ltd. v. Scott & Aylen (1988), 19 C.P.R. (3d) 481.

What authority pertains to the care exercised by examiners in approving pharmaceutical trademarks?

To avoid confusion or mistake in choice of dispensing medication, pursuant to Mead Johnson v GD Seattle and Co (the OVIN case). In Mead Johnson & Co. v. G.D. Searle & Co. (1967), 53 C.P.R. 1, Justice Dumoulin stressed the importance of avoiding confusion with respect to the selling and dispensing of pharmaceutical products even in those instances where the products in question are sold only by means of prescription and are only dispensed by pharmacists from written instructions from a physician.

What is the law applicable to NL marks? Can all marks be associated with new marks?

Trademarks registered in NL prior to April 1, 1949 don't form part of the register and can't be associated.

How do various editions of the Nice Classification system affect marks on the register?

When a new edition of the Nice Classification is in place, any changes apply only to Canadian applications filed on or after the effective date of the change. When an application has been filed prior to the effective date of the new edition, applicants have the option of remaining in compliance with the edition of the Nice Agreement that was in effect at the date of filing or amending the application to comply with the current edition during examination. An applicant may voluntarily submit an amended application to bring it in line with the current edition of the Nice Classification. However, if an applicant choses to do so, the application must conform to the current edition for ALL the goods or services in the application. Applicants cannot choose to have some goods or services conform to the current edition and other goods or services conform to the requirements of a previous edition.

Can a public authority own both certification and s. 9 official marks (higher threshold of protection)?

Yes

Can non-Canadian entities own and request publication of a mark under s. 9?

Yes

Must a prior use filing on the basis of a foreign prior use be registered in the same name, or in the name of a predecessor in title? Cite applicable authority.

Yes, 16(2) of the Act specifies that only 'the applicant or the applicant's predecessor in title has duly registered for the country of origin'. *Always also cite generally the Trademarks Office Examination Manual.*

Can a prior use filing based on another country be in more than one country?

Yes, in the case of a mark claiming multiple goods and services. *Always also cite generally the Trademarks Office Examination Manual.* - this allows multiple countries where use may not exist in one specific country for all enumerated goods and services.

Can one owner register multiple similar marks? Cite applicable authority.

Yes, slight variations in owner's name are acceptable if the same owner - under s. 15(1) of the Act, ("I-x5") 'confusing trademarks are registrable if the applicant is the owner of all such trade-marks, which shall be known as *associated trademarks.'*

What is the applicable section for name of a specified good or service in another language?

s. 12(1)(c)

What section of the Act pertains to applications based on registrations abroad?

s. 31

What types of clerical errors can be remedied by the Registrar? Cite applicable authority.

s. 33(1) of the Regulations: where a request is made by an Applicant, owner, or agent.

Cite applicable authority for a prior use filing basis.

use in canada, s.16(1) of the Act use abroad, s. 16(2) of the Act - *Always also cite generally the Trademarks Office Examination Manual.*

What are acceptable statements of goods and services pertaining to advertising, promotion, and marketing?

(See also the practice notice entitled Compliance with Section 4 and Paragraph 30(a) Advertising, Marketing and Promotional Services) In view of the Ralston Purina Co. decision, supra, examiners will question services where it is not clear that a real service is provided to the public. The criterion is whether a third party benefits from the service. For example, if the applicant's "advertising" and "marketing" services simply make the public aware of the applicant's own products, there is not considered to be a benefit to the public. In order to determine if the service is being offered to a third party, examiners may ask for further specificity by questioning the means or manner by which the service is provided. For example, the following would be considered acceptable: "Database marketing services, in the form of compiling customer specific databases for marketing purposes and consulting, designing, printing, and collecting marketing information" "Promoting the sale of credit card accounts through the administration of incentive award programs". In circumstances where the public does benefit from promotional services, in spite of the fact that they relate to the promotion of the applicant's own goods and services, the services will be considered acceptable. For example, "providing coupon programs pertaining to a line of food products" is considered a service within the meaning of section 4 of the Trade-marks Act. Examiners will question "cooperative advertising" as it is generally understood to be a cost sharing arrangement between the retailer and supplier for the advertising and promotion of their products. In order to be acceptable, the statement of services must be described so that it is clear that the services are offered to a third party, and the services must be described in specific and ordinary commercial terms in compliance with paragraph 30(a) of the Trade-marks Act. --- Compliance with Section 4 and Paragraph 30(a) Advertising, Marketing and Promotional Services Publication Date: 1999-09-01 In view of the Ralston Purina Co. v. Effem Foods Ltd. decision, 81 C.P.R. (3d) 528, it is clear that the services defined as "advertising and marketing relating to products of the applicant" do not constitute a service pursuant to section 4 of the Trade-marks Act. Consequently, the Office has reversed its practice and no longer considers these services acceptable. While there are no provisions in the Act that restrict a service to one that is not merely incidental or ancillary to the sale of goods (Kraft Ltd. v. Registrar of Trade Marks 1 C.P.R. (3d) 457), there is still a requirement that there be a service offered to some third party. Therefore, the Office questions any statement of services where it is not clear that a real service is provided to the public; the criteria for assessment is whether a third party benefits from the service. Furthermore, "promotional services" are not considered to comply with the provisions of paragraph 30(a) of the Act. Therefore, the Trademarks Office, for the purposes of paragraph 30(a), requires these services to be specified in greater detail. By way of example, the following would be considered acceptable: "promoting goods and services by arranging for sponsors to affiliate goods and services with [indicate activity, e.g. a particular sports competition]; promoting goods and services through the distribution of discount cards; promoting the sale of credit card accounts through the administration of incentive award programs; promoting the sale of goods and services by awarding purchase points for credit card use; promoting the sale of goods and services through the distribution of printed material and promotional contests". This requirement applies to applications presently pending as well as those filed in the future.

Pharmaceutical, Veterinary, Botanical, Nutraceutical, Homeopathic, Medicinal and Medicated Preparations, Remedies, Supplements, Extracts, Functional Foods, Enhanced Water, Medicinal Marijuana and Cannabis Oil

(See also the practice notice entitled Compliance with Paragraph 30(a) of the Trade-marks Act - Pharmaceuticals) Goods that are described as "preparations", "remedies", or "supplements" for "pharmaceutical", "veterinary", or "medicinal" use, and similar descriptions of goods, are not considered specific pursuant to paragraph 30(a) of the Trade-marks Act. The fundamental principles for determining the acceptability of goods and services described in section II.5.4.b of this Manual apply equally to such goods, and consist of the ability to: Assess whether paragraph 12(1)(b) of the Trade-marks Act applies; Assess confusion with another mark; and Assess whether accepting the goods as described will grant the applicant an unreasonably wide range of protection. In addition to these principles, the Office of the Registrar, for the purposes of paragraph 30(a), requires such goods to be specified in greater detail by either: Naming the disease; or Specifying the disease group or type of disease, disorder or condition to be treated; or By indicating the specific type of medication. Veterinary pharmaceuticals, preparations or medicines are often divided into areas relating to specific animals or groups of animals, and often relates to the prevention rather than treatment of disease. For example, "pharmaceutical preparations for the treatment of infectious diseases, namely respiratory infections, eye infections" require the type of "infectious diseases" to be specified. However, "veterinary pharmaceutical preparations for the treatment of infectious diseases in poultry" require only the type of animal or group of animals to be specified. --- This practice notice is intended to provide guidance on current Trademarks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation the legislation must be followed. The goods "pharmaceutical preparations" are not considered sufficiently specific to meet the requirements of paragraph 30(a) of the Trade-marks Act which requires that an application for the registration of a trademark contain a statement in ordinary commercial terms of the specific goods or services with which the mark has been used or is proposed to be used. The fundamental principles for determining the acceptability of goods and services apply equally to pharmaceuticals, and are: the ability (a) to assess whether paragraph 12(1)(b) of the Trade-marks Act applies; (b) to assess confusion with another mark; and (c) to assess whether accepting the goods/services as described will grant the applicant an unreasonably wide ambit of protection. Pursuant to these principles, the Trademarks Office, for the purposes of paragraph 30(a), requires "pharmaceutical preparations" to be specified in greater detail by either (a) naming the disease, or (b) specifying the disease group or type of disease, disorder or condition to be treated, or (c) by indicating the specific type of medication. (see FCs below)

What are acceptable statements of goods and services pertaining to Services Related to the Electronic Transmission of Data?

(See also the practice notice entitled Compliance with Section 30(a) — Programs - Data Transmission Services) As a general rule, services including the term "data" such as "data transmission services", "electronic transmission of data", "data and voice telecommunications" or "electronic transmission of data and documents via computer terminals" or services that relate to data such as "delivery of messages by electronic transmission" or "electronic-store-and-forward messaging" are not acceptable without further specification since "data" in this context can include any information in numerical form that can be digitally transmitted or processed (including audio, video, voice, or any other form of data). If the essential nature of the services involves providing data to customers, the applicant should set out the specific nature of the data (e.g., financial advice, client lists, video news show, music, etc.), and the general means by which it is communicated to the customer (e.g., online databases, online stores, Web sites, email, pager, or cellular text messages, etc.). If the essential nature of the services involves providing the ability to communicate (i.e., transmission services), then the applicant should set out the specific means of communication (e.g., satellite, wireless, telephone lines, cable network, cellular, wide-area network, fax, etc.), and the general nature of the data transmitted. It is understood that the applicant may have limited control over the exact content being transmitted if they only supply the means of transmission. --- Compliance with Section 30(a) — Programs - Data Transmission Services Publication Date: 1999-04-14 The goods "computer utility programs" are no longer considered sufficiently specific to meet the requirement of paragraph 30(a) of the Trade-marks Act; that an application for the registration of a trademark contain a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used. As the Office has not been accepting "computer software" as being in compliance with paragraph 30(a) since September 1996 when the Examination Goods and Services Manual was revised, this notice simply serves as a reminder of that policy. The revised manual requires that "computer software" be specific as to the area of use and function of the software. Therefore, effective immediately, the Trademarks Office will, for the purposes of paragraph 30(a), require the goods "computer utility programs" to be specified in greater detail. By way of example, the following would be considered acceptable: "computer utility programs" namely diagnostic utility program for providing details on devices installed in a computer system, batch job utility program for managing scheduling, queuing and execution of batch jobs, hard disk drive utility program for use in adding a hard disk drive or repartitioning a hard disk drive, disk management utility program for defragmenting files and optimizing disk performance, video utility program for testing and evaluating a computer monitor or video display for optimum image and picture quality. This requirement applies to applications presently pending as well as those filed in the future. The services "data and voice telecommunications", "delivery of messages by electronic transmission", "electronic transmission of data and document via computer terminals", electronic transmission of message and data" and "electronic store-and-forward messaging" are no longer considered sufficiently specific to meet the requirement of paragraph 30(a) of the Trade-marks Act; that an application for the registration of a trademark contain a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used. Therefore, effective immediately, the Trademarks Office will, for the purposes of paragraph 30(a), require these services to be specified in greater detail. By way of example, the following would be considered acceptable: "data and voice telecommunications", "delivery of messages by electronic transmission", "electronic transmission of messages and data", "electronic store-and-forward messaging", namely facsimile transmission, cable television transmission, telegram transmission, electronic mail services, electronic voice message service, namely, the recordal, storage and subsequent delivery of voice messages by telephone; computer services, namely leasing access time to computer data bases in the field of mutual funds and "electronic transmission of data and documents via computer terminals" namely, electronic mail services. This requirement applied to applications presently pending as well as those filed in the future.

What documentation is required to record a merger in trademark owners? Is there a fee?

1. Copy of certificate of amalgamation or merger OR satisfactory evidence of merger 2. No fee

What documentation and fees are needed to record an assignment? Cite applicable authority.

1. Copy of executed assignment OR evidence of transfer of mark 2. Prescribe fee of $100.00 3. s. 48 Trademarks Act and Regulations

Non-trademark protection that could be obtained for a purple soup cauldron shape with word Bewitchingly Good and a soup cauldron design picture and proprietary recipe? What if designed by a third party?

1. Copyright for words or picture 2. Must obtain: A. copyright assignment AND waiver of moral rights B. trade secret or patent for proprietary spice mix recipe (must file within 1 year of publication) C. industrial design for shape of container (must file within 1 year of publication)

Permissible extensions of time?

1. Responding to office action 2. Up to 3 to amend application 3. Waiting for foreign application to issue 4. Awaiting record of assignment 5. Cited mark on the Register (confusing) in middle of s. 45 proceeding

What reasons can be given in support of a trademark clearance or search opinion as to whether trademarks on the Register are likely to be an obstacle to registration? What should your approach be to pass the test?

1. marks identical (or idea suggested by marks is the same( 2. same or unrelated goods or services 3. same channels of trade 4. *design element* can be a distinguishing factor 5. idea suggested by mark as a whole is different 6. *prohibited mark - s. 9 - PAY ATTENTION TO OWNER* 7. likely to be granted if *registered after another similar mark - PAY ATTENTION TO REGISTRATION DATES* - i.e., 'services are related but will co-exist with BOSS MARINA which has been allowed'. 8. not an obstacle if *expunged* - look below trademark number and look *beyond related goods/services*. LIST AS MANY OF THESE AS POSSIBLE SO YOU GET MAXIMUM MARKS.

What rules apply to name and address changes?

A list will be kept for all trademark agents and representatives for service. All name and address changes for a trademark agent or representative for service will be handled by the Formalities Section. The trademark agent or representative for service will not be required to supply a list of affected trademarks (registered or pending). The change will be reflected on all trademark applications and registrations for which the person or firm acts as the trademark agent or representative for. Paper files and existing paper documents will not be amended to reflect the change. However, the new name and/or address will appear on subsequent correspondences. If the individual or firm wishes to be entered as the trademark agent and the representative for service, it should be clearly stated in the correspondence.

Three applications that could be filed for a purple soup cauldron shape with word Bewitchingly Good and a soup cauldron design picture? What is available for the shape itself and what must be filed in support?

A. 1. The colour purple applied to a cauldron shape (like red applied to a sole in Louboutin case) 2. trademark for word mark Bewitchingly Good 3. design mark for soup cauldron design B. Distinguishing guise: must file - Evidence of use of distinguishing guise in Canada AND show distinctive as of filing date

Name this case: Display of a trademark for services, on a website not originating in Canada, may be use and advertising of the trademark in association with services offered in Canada.

Benson & Hedges (Canada) Ltd. v. Empresa Cubana Del Tabaco (1975), 23 C.P.R. (2d) 274 (T.M.O.B.)

What rules apply to contextualizing Nice classes of goods and services?

Class and Context In some cases, the context of the goods or services within a particular class may serve to clarify an otherwise unacceptable statement of goods or services. When a statement of goods or services includes a term that has multiple meanings, the class in which it is placed can aid an examiner to determine the meaning of the good or service. The statement "pants, jeans and mufflers" in Class 25 would not require further clarification, as the class and context serves to indicate that the applicant is seeking registration for clothing and not for engine mufflers in Class 7. However, if the applicant simply applied for the goods "mufflers" alone, this statement is void of context and will need to be redefined pursuant to paragraph 30(a). Once redefined, the examiner will then be in a position to determine if the applicant has placed "mufflers" in the appropriate class. If the classification is incorrect, the examiner will either inform the applicant that the classification is incorrect if issuing a report or simply approve the application without reference to the Nice class. The goods "skin lotions" are understood to mean cosmetics in Class 3 and are therefore not medicated. However, if the goods are medicated, the "skin lotions" must be further defined to justify their placement in Class 5. See also section II.5.4.11 of this Manual for more information on defining medicated products. Lastly, care must be taken concerning the scope of goods or services when viewed in the context of the class in which it is applied for. For example, an application for various articles of "clothing" in Class 25 would not include "articles of clothing for protection against accidents" in Class 9. Similarly, an application for various types of "cases" in Class 18 could not include within its scope "violin cases" in Class 15.

Name this case: A mark which is applied to wares for the purpose of ornament or decoration only is not registrable as a trad-mark.

FileNET Corporation v. Canada (Registrar of Trade-marks) (2002), 22 C.P.R. (4th) 328 (F.C.A.)

Name this case: Sections 3 and 4 of the Trade-marks Act are not applicable to official marks, however, these sections may nonetheless assist in the interpretation of the meaning of "adoption" and "use" of official marks

G. W.J. Hughes & Sons "Corn Flower" Ltd. v. Morawiec, (1970), 62 C.P.R. 21, [1970] Ex. C.J. No. 11 (QL) (Ex. Ct.) (Corn Flower)).

What are acceptable statements of goods and services pertaining to telecom?

Generally, services that include the term "telecommunications" (e.g., "telecommunication services"), or that relate to "telecommunication services" (e.g., "communication services", "information technology services", "electronic commerce services"), are not considered acceptable without further specification, since "telecommunication" in this context can include any communication at a distance. Therefore, services that either include the term "telecommunications" or relate to "telecommunication services" should specify the nature of the services (i.e., the specific type of communication) and the field of the services (i.e., area of business the applicant provides these services). For example, the following would be considered acceptable: "Providing multiple user access to a global computer network". In certain circumstances, the services applied for are so specific that the area of business is obvious from the specific type of communication. For example, the following would be considered acceptable: "Videoconferencing services" "Wireless digital messaging services" "Personal Communication Services" or "Radio broadcasting services".

Name this case: 6. A party claiming status as a public authority for purposes of holding a mark under Section 9(1)(n)(iii) must be under significant government control at all times.

HomeAway.com, Inc. v. Hrdlicka 2012 FC 1467

How must the mark be identified and described?

I.5.3 Identification and Description of the Mark - Paragraph 30(h) and Rule 24 (See also section II.6.2 of this Manual and the practice notice entitled Compliance with Paragraph 30(h) — Marks in a Special Form) Paragraph 30(h) of the Trade-marks Act provides that unless the application is for the registration only of a word or words not depicted in a special form, a drawing of the trademark is required. The trademark is considered to be a word mark that is not in special form if it consists of: A word or words in upper case letters. A word or words including lower case letters. A word or words including numerals. A word or words including French accents. A word or words including any of the punctuation marks found on standard English or French keyboards. The trademark must be shown in a drawing if it consists of: A word or words in special form. A word or words which incorporate foreign accent marks such as the Spanish tilde. A composite mark comprising word and design elements. A mark comprising foreign characters. A word or words appearing in colour (when colour is claimed as part of the mark) and the drawing is lined for colour. If the trademark contains design elements, the phrase "The trademark is shown in the attached drawing" should be inserted in the application and the drawing annexed to the application form. The details of the drawing may be described in situations where some portions of the mark cannot be reproduced clearly in the Trademarks Journal. Reference should not be made to a specimen. The following are examples that would NOT be acceptable: The trademark consists of the word AJAX and a star. The trademark consists of the word AJAX and a star as shown in the attached drawing. The trademark is the design as shown in the attached specimen. Any of the foregoing are properly described by: "The trademark is shown in the attached drawing." Rule 24 of the Trade-marks Regulations provides that a separate application shall be filed for the registration of each trademark. The following are examples of what examiners should not accept: The applicant indicates willingness to accept registration of any of the following trademarks: JIMMY'S PIZZA JIMMY'S HAMBURGERS JIMMY'S MUFFINS The applicant lists the marks and indicates a preference: HEAVEN'S FAVOURITE (first choice) ECSTATICA (second choice) FABUTASTIC (third choice) If an application is filed wherein the trademark is composed in whole or part of words in more than one language, the trademark must be used exactly in the manner in which it is set out in association with the goods or services. Registration No. 224,146 provides such an example, the trademark consisting of the following words: LA FONTAINE DE TREVI THE TREVI FOUNTAIN LA FONTANA DI TREVI The mark was registered in this fashion with the understanding that it would be used in association with the goods exactly in the manner in which it is set above; the three versions cannot be used separately but must be used together. However, if the mark is composed of three separate versions in three languages, and where those versions are to be used separately in association with goods or services, the applicant must apply to register three separate trademarks.

What types of trademark application are available?

II.4 Types of Applications — Section 16, Paragraphs 41(1)(c) and 30(b) to (f) In addition to verifying the application's compliance with paragraph 30(a) of the Trade-marks Act, examiners must also review the basis upon which the applicant seeks to register the mark. The applicant will be aided in the completion of his/her application by referring to the Trade-marks Regulations, especially to Rule 25 and to paragraphs 30(b) to 30(f) of the Trade-marks Act. Although the Trademarks Office does not supply pre-printed forms, suggested forms are available. Applicants may also file their applications electronically.

What are the allowable identities of a trademark applicant?

II.5.1 Identity of the Applicant The applicant must be a "person" entitled to registration, as defined in section 2 of the Trade-marks Act. Examiners commonly refer to "persons" as "legal entities". The "person" or legal entity may be an individual, partnership, trade union, association, joint venture or corporation. The name stated in the application as the applicant must be a legal entity. A legal entity can function legally, sue or be sued and make decisions through agents, as in the case of corporations. However, the Registrar will generally no longer require an applicant to confirm that it is a "person" as defined in section 2 of the Trade-marks Act. The onus rests ultimately with the applicant to ensure compliance with the Trade-marks Act. When two or more individuals or legal entities apply for the registration of a trademark, it must be confirmed that they form a lawful association. It is not enough for the individuals to say that they are in business together. The individuals must confirm in writing that they have a legal agreement between them, in other words, a lawful association, such as a partnership or a joint venture. A statement to that effect is sufficient. It is not necessary to submit evidence, an affidavit or revised application. If the applicant cannot confirm that it is a lawful association, then a new application must be filed along with the corresponding fee, correctly identifying the applicant. Whenever applicable, a predecessor-in-title must be named, indicating previous ownership.

What rules apply to trademark applicants whom are individuals?

II.5.1.1 Individuals When the applicant is an individual, he/she shall provide a surname and at least one given name. Any trading styles used can also be incorporated in the applicant's identification. Example: John Doe trading as Doe's Deli. The applicant must not be identified by a trading style alone. Whenever it appears that the application has been made in the name of the applicant's trading style rather than the applicant's own name, the examiner will request an amended application, which must name the legal owner, that is, the individual, as the applicant.

What rules apply to trademark applicants whom are partnerships?

II.5.1.2 Partnerships While the Office will not register a trademark in the name of more than one individual or legal entity, applications to register a trademark may properly be made in the name of a partnership, which is considered a lawful association. Generally, a group of persons conducting a business as a partnership does so under a trading style (e.g., Mary Jones and John Smith, a partnership, doing business as Jonesmith Enterprises). It may occasionally happen that two or more individuals apply to register a trademark, but do not indicate the existence of a partnership. Written confirmation that a partnership exists will be sufficient, and the applicant may provide a trading style if one exists. The onus of determining whether or not a partnership is a legal entity rests with the applicant or registrant. Accordingly, the Office accepts applications, assignments, etc., filed in the partnership name only, without reference to the partners. However, the partnership must be identified as such.

How can goods and services be allowable when contextualized?

II.5.4.2 Context of the Goods and Services In some cases, the context of a statement of goods or services may serve to specify an otherwise unacceptable statement of goods or services. Goods or services may be acceptable when they are understood as being sufficiently specific in the context of the entire statement of goods or services. For example, "cases" alone are not acceptable as they could include any type of "cases" from camera cases to pillowcases. However, in an application for "cameras, tripods, and cases", the goods "cases" would be acceptable as it is clear from the context that the "cases" would be restricted to camera cases. Similarly "delivery" services alone is not acceptable as the service could include any type of delivery from flower delivery to furniture delivery. However, an application for "restaurant services" including the service "delivery" would be acceptable as the service would be understood to mean food delivery. Note: Goods or services which are separated by semi-colons (;) are generally considered to stand on their own and therefore must meet the requirements of paragraph 30(a) of the Trade-marks Act without regard to the other listed goods or services.

What rules apply to trademark applicants whom are joint ventures?

II.5.1.4 Joint Ventures Applications may also be made by two or more applicants who are engaged jointly in commercial activities which result in the production of goods or the provision of services, e.g., a joint venture, which is another form of lawful association. The full names and full business addresses of the applicants must be set out in the application. Only the general partners in a joint venture need be named, not any limited partners. However, in cases whereby the parties have separate addresses, the information should be data captured in the following manner: ABC Inc. and XYZ Ltd., a joint venture 123 1st St. Ottawa, ON K1K 0A0 and 789 2nd Ave. Ottawa, ON K3K 1B1 However, due to the fact that the Office is limited by the number of characters that can be entered in the address field, confirmation from the applicants involved in a joint venture as to which address should be entered may sometimes be requested. The Office no longer requires information establishing the degree of involvement of each partner as was previously the case. Such information may be required, however, to disclose the procedure by which the trademark may be assigned or ownership resolved if the joint venture is dissolved. This requirement should be dictated by the facts in each case, and the documentation submitted at the time of assignment should deal with this question.

What rules apply to trademark applicants whom are corporations?

II.5.1.5 Corporations The instructions for completion of an application do not require the applicant to name the jurisdiction under whose laws it was incorporated. The application must, however, contain the full name of the corporation, which may be a private organization or a public authority, e.g., a municipal or provincial corporation or a provincial or federal statutory body. A common error is when an individual files an application on behalf of a corporation and identifies him/herself either solely or in addition to the corporation or company which he/she represents. In the following examples, if the applicant is XYZ Ltd, all information preceding XYZ Ltd. is considered superfluous and should not be included when identifying the applicant: Jack Jones, President of XYZ Ltd. Jack Jones on behalf of XYZ Ltd. Jack Jones, attorney of XYZ Ltd. Occasionally, an individual who intends to form a corporate body will apply for the registration of a trademark and will request that the registration be made in the name of the intended corporate body. An as-yet-uncreated business entity cannot be a "person" as defined in section 2 of the Trade-marks Act. The applicant may file the application in their own name, and subsequently assign ownership to the intended corporate body after it has been incorporated. Where a division or component of a corporation is engaged in commercial activity associated with the use of a trademark, examiners will accept, as a proper indication of use by a division, the following: General Furniture Ltd., operating through its division Bowes Furniture Manufacturing Co. or General Furniture Ltd., sometimes doing business as Bowes Furniture Manufacturing In both cases, "General Furniture Ltd." would be considered the legal entity. II.5.1.6 Use of French or English Form of Corporate Name Subsection 10(3) of the Canada Business Corporations Act states the following: Subject to subsection 12(1), the name of a corporation may be set out in its articles in an English form, a French form, an English form and a French form, or a combined English and French form, so long as the combined form meets the prescribed criteria. The corporation may use and may be legally designated by any such form. Therefore an applicant whose name incorporates both a French and English version, e.g., Pamplemousse Inc./ Grapefruit Inc., will be recognized as the same entity whether identified only as Pamplemousse Inc. or Grapefruit Inc.

What if the wrong applicant is identified?

II.5.1.7 Wrong Identification of Applicant When an application to register a trademark is filed in the wrong name, an attempt is made to remedy the error. The following are examples of the most common errors made when identifying the applicant and the corresponding actions required: The application shows "Incorporated" instead of "Limited", or vice versa; "Company Limited" instead of "Company Inc.", or vice versa; "Company of Canada Ltd." instead of "Company Ltd.", or vice versa, and so on. A letter from the applicant to the effect that the erroneous entity did not exist at the date of filing will be required together with the details of the filing error for the correction to be made. The application is filed in the old name of the applicant when a change of name occurred prior to the date of filing the application. The Office will accept this change with the submission of a letter setting out the details of the filing error and a revised application showing the correct name of the applicant. This situation is not contrary to Rule 31(a) as the actual "identity" of the applicant has not changed. Note: The Trademarks Office will amend a pending trademark application to reflect a change of name of the applicant upon receipt of a written request; no fee is required. As a general rule, there is no requirement to provide the Office with evidence of a change of name. If the name change is a result of a merger, amalgamation or a change in corporate status, the Office will require some evidence that shows the circumstances in which the name changed. Non-notarized extracts of corporate registers or copies of the certificate of merger/amalgamation will suffice as evidence of the change in corporate status or a change of name resulting of a merger/amalgamation. The applicant advises that an assignment took place prior to the filing of the application; however, the application was filed in the old name. The Office will not accept an affidavit or letter attesting to the circumstances surrounding the error since the applicant was not the owner at the date of filing. This situation is contrary to Rule 31(a) of the Trade-marks Regulations and the application must be re-filed in the name of the current owner. The applicant is a United States company and is shown as a state corporation, for example, an Illinois corporation, but the Office is advised that this should have been shown as a Delaware corporation. If the Illinois corporation did not exist, then the Office will require a letter setting out the details of the error before accepting the amendment to show the applicant as a Delaware corporation. If both corporations (Illinois and Delaware) existed at the time of filing and the applicant filed the application naming the wrong one, then nothing can be done to correct the error as this would change the identity of the applicant and would be considered contrary to Rule 31(a) of the Trade-marks Regulations. The application must be re-filed in the name of the correct owner. When an application is filed in the name of a non-legal entity, no affidavit is required to correct the applicant's name to a legal entity such as changing Farm Foods to Farm Foods Ltd. or to Mary Smith trading as Farm Foods. Note: Any change to the applicant's name should be made by the assignment section, including typographical errors. Once the change is made, a written confirmation is sent to the applicant outlining any amendments made.

How must the address be provided in a trademark application?

II.5.2 Address of the Applicant — Paragraph 30(g) The applicant in each case must provide the address of his/her principal office or place of business. A separate mailing address may be provided if the applicant does not wish correspondence to be sent to the foregoing. If an individual does not have a business address, the address of the place of residence will suffice. Where an applicant consists of more than one entity, as in partnerships or joint ventures, separate addresses for each entity may be supplied. If the applicant has no office or place of business in Canada, the address of the applicant's principal office or place of business abroad as well as the name and address of the person or firm named as the representative for service must be provided. See also section II.5.6.2 of this Manual. Note: Any change to the applicant's address should be made by the assignment section, including typographical errors. Once the change is made, a written confirmation is sent to the applicant outlining any amendments made.

Discs and pre-recorded media?

II.5.4.10 Discs and Other Blank or Pre-recorded Media, such as Magnetic Data Carriers The goods "pre-recorded discs" and "pre-recorded magnetic data carriers" are not considered to be specific pursuant to paragraph 30(a) of the Trade-marks Act. The specific format of these goods must be described, e.g., "floppy disks", "hard disks", "CDs", "DVDs", "CD-ROMs" and "magnetic-stripe cards". The specific content of these goods must also be described, e.g., movies, music, photos, language instruction, computer games, hotel room key cards or phone cards. Discs that contain pre-recorded media may also specify content by indicating the specific field of interest, followed by the words "containing topics", "featuring topics" or "containing information", e.g., "featuring topics related to the game of baseball", "containing topics of instruction in astronomy", "containing information in the field of trademarks". However, "topics in the field of business consulting" is not considered to be a specific field of interest since "business consulting" is a general term that encompasses a wide variety of topics. If the content of the discs is described by indicating only a specific field of interest, it is understood that the primary purpose of the discs is to provide information. While the discs may include various audio-visual components, the Office considers that the discs do not contain software nor do they contain books, computer games, movies, music etc., unless the applicant explicitly states that they do. If either the pre-recorded discs or the pre-recorded magnetic data carriers contain computer software, the function of the software must be provided and, if the area of use is not obvious from the function of the computer software, the area of use should also be provided. Note: The goods "pre-recorded audiotapes", "pre-recorded videotapes", "pre-recorded videocassettes", "pre-recorded audio cassettes", "audio tape recordings" and "video tape recordings" are considered to indicate a specific format and specific content since the nature of the media limits the content to solely magnetic recordings of sounds and visual images and are therefore acceptable as indicated.

What rules apply to indefinite terms in trademark applications when specifying goods and services?

II.5.4.3 Indefinite Terms - "And the like", "And similar goods", "Including", "Related to", "Related services", "Etc.", and "Featuring" The statement of goods or services must be specific and avoid indefinite words and phrases. As a general rule, the following indefinite terms cannot be used to specify goods or services which would require further specification: "and the like", "and similar goods", "including", "related to", "related services", "etc." and "featuring". Such terms are generally only acceptable when they follow specific goods or services. For example, since "restaurant services" is specific, "restaurant services including take-out services" would also be acceptable. Similarly, since "mutual fund services" is specific, "mutual fund services including mutual fund distribution" would also be acceptable. However, "financial services relating to mutual fund services", would not be acceptable as financial services alone are not considered to be specific having regard to paragraph 30(a) of the Trade-marks Act. In some circumstances, indefinite terms may be used in a statement of goods or services if they are used to provide further specification which is not essential to determining the specific nature. For example, "roller-type lint remover for use in removing foreign particles from clothing, furniture, upholstery and the like" is acceptable since the goods have already been specifically defined as being for "removing foreign particles from clothing, furniture, upholstery" and the indefinite term "and the like" merely indicates other similar uses. As a general rule, the term "featuring" will only be acceptable when it follows specific goods or services. For example, since "casual clothing" is acceptable, "casual clothing featuring pants, dresses and shorts" is also acceptable. However, "clothing featuring pants, dresses and shorts" would not be acceptable since "clothing" is not considered to be specific pursuant to paragraph 30(a) of the Trade-marks Act. The Office accepts the use of "featuring" where the applicant must indicate the specific contents or field of interest (e.g., books, computer games, movies, music, photos, etc.) of CDs, DVDs, optical, floppy or other discs. For example, "compact discs featuring topics of instruction in astronomy" and "digital videodiscs featuring computer games" are acceptable.

What rules apply to definite terms in trademark applications when specifying goods and services?

II.5.4.4 Definite Terms - "Namely", "Consisting of" or "Specifically" Goods and services that require further specification may be specified using the definite terms "namely", "consisting of" or "specifically". For example, "alarms" are considered to be too broad but may be further specified by using the definite term "namely" to list the type of alarms, e.g., "alarms, namely fire, car, and burglar". Similarly, "consulting" is considered to be too broad but may be further specified by using the definite term "namely", e.g., "consulting services, namely business management consulting" or by using the definite term "specifically", e.g., "consulting services, specifically capital investment consulting". Note: The Office, for purposes of clarity, does not accept the colon (:) instead of "namely".

What rules apply to specifying terms in trademark applications when specifying goods and services?

II.5.4.5 "In the nature of", "Such as", "Comprising", "Containing", "In particular" or "Particularly" These terms may be acceptable in a statement of goods or services where the kind, sort or type of goods or services has been specified and the goods or services following any of these terms are considered to comply with paragraph 30(a) of the Trade-marks Act. For example, "clothing in particular casual wear" is understood to be limited to "casual wear" which is listed as acceptable in the Goods and Services Manual. However, "clothing comprising outerwear" is not considered to be acceptable since "outerwear" is not considered to be a specific kind, sort or type of clothing. Goods stated as "gift baskets containing cheese, bread and prepared meats" are understood to be limited to the goods listed after "containing" which are acceptable pursuant to paragraph 30(a) of the Trade-marks Act. However, "electrical systems comprising modules" would not be acceptable since "modules" are not considered to be ordinary commercial terms nor are they specific goods. Similarly, "entertainment services such as hockey games" are understood to be limited to "hockey games" which are considered to be in ordinary commercial terms for specific services and do not encompass other services. However, "entertainment services in the nature of music events" are not considered to be acceptable since the kind, sort or type of music event has not been specified.

Accessories, equipment?

II.5.4.6 "Accessories", "Equipment", "Apparatus", "Systems" and "Products" As a general rule, goods described by the terms "accessories", "equipment", "apparatus", "systems", or "products" are not considered acceptable without further specification since they are considered to include different types of goods with different channels of trade which are not necessarily sold in close proximity. For example, "automobile accessories" could reasonably include everything from air deodorizers to first-aid kits to portable televisions. However, "hair accessories" are acceptable since the accessories are reasonably understood in the trade to be a recognized set of items with the same channels of trade that are typically sold in close proximity, such as barrettes, clips, and side combs. Similarly, "telecommunications equipment" could include everything from end user items such as fax machines and two-way radios, to goods that support telecommunications delivery such as communication towers and fibre optic cables. However, "hair cutting equipment" is acceptable since the function or the area of use of the equipment can be reasonably understood to be very narrow, since hair cutting is clearly understood to be a singular activity and the equipment confines itself to manual or power operated tools for cutting hair. Another example is "teaching apparatus" which could reasonably include everything from computer software, to notebooks, to videodiscs. However, "anesthetic delivery apparatus" is acceptable since the function or area of use of the apparatus can be reasonably understood to be very narrow and the goods are understood in the trade to refer to a limited set of items in the medical field such as the anesthetic machine, vaporizers, ventilators, and monitors. Goods including the term "systems" may be acceptable if the goods are reasonably understood in the trade to be a recognized set of items that is often sold as one complete unit, such as "suspension systems for motor vehicles", which are specific ordinary commercial terms for the system of springs, shock absorbers and linkages that connect a motor vehicle to its wheels. Goods including the term "products" may be acceptable if the goods are ordinary commercial terms for specific goods, such as "dairy products", which are considered to be foodstuffs made from milk that are sold through the same channels of trade in close proximity to each other.

Devices?

II.5.4.8 Devices Where ordinary commercial terms for the goods cannot be found, the term "devices" may be acceptable if the field and function is provided and the goods meet the requirements of the three-part test described in section II.5.4.b of this Manual). For example, the Goods and Services Manual lists as acceptable the goods "medical devices for the qualitative detection of antibodies in human specimens collected as plasma or dried blood spots" and "electronic medical devices implanted in the eye to help restore vision".

Computer software?

II.5.4.9 Computer Software and Computer Programs An identification of "computer software" or "computer programs" is not acceptable without further specification. The specific function of the computer software must be provided and, if the area of use is not obvious from the function of the computer software, the specific area of use should also be provided. Acceptable entries for computer software can be found in the Goods and Services Manual.

What rules apply to the Applicant's statement of claim of entitlement?

II.5.7 Applicant's Statement of Claim of Entitlement — Paragraph 30(i) Pursuant to paragraph 30(i) of the Trade-marks Act, the application must include the statement that "the applicant is satisfied that he is entitled to use the trademark in Canada in association with the goods or services described in the application". This establishes that all information and supporting evidence, including revisions or additions of same, have been submitted in good faith, and that the application as it stands is approved by the applicant. See also section IV.8 of this Manual.

What rules apply to the signature of the applicant?

II.5.8 Signature of Applicant A signature is not required for filing a trademark application. The Trademarks Office will also accept trademark applications and letters of prosecution which have been stamped with electronic signatures such as those currently used by a number of firms. An application by a partnership may be signed by one of the partners if the partners are named. If the partnership comprises general and limited partners, the application may be executed by a partner who can bind the partnership. An application by a corporation may be signed by an officer authorized to sign on its behalf, and the title of the signing officer should be provided. A trademark agent may also sign on behalf of the foregoing entities. The signature of each of the parties in a joint venture may be affixed to the application, unless it is signed by their trademark agent.

What rules apply to the predecessor in title?

II.6.1 Predecessor in Title — Paragraphs 30(b), (c) and (d) Pursuant to subsection 50(1) of the Trade-marks Act, use accrues to the applicant if, under certain conditions, use of the trademark is by a licensee. Wherever applicable, a predecessor in title must be named, indicating previous ownership. For example, in order to establish that use of the applicant's trademark in Canada has been continuous, the applicant must provide a list of all predecessors in title in descending order to cover the period from the date of first use to the present.

What general rules apply to trademark drawings?

II.6.2 Drawings — Paragraph 30(h) and Rules 27(1) and 28 (See also section II.5.3 of this Manual and the practice notice entitled Compliance with Paragraph 30(h) - Marks in a Special Form) Paragraph 30(h) of the Trade-marks Act provides that unless the application is for the registration of only a word or words not depicted in a special form, a trademark application shall contain a drawing of the trademark and such number of accurate representations of the trademark as may be prescribed. Drawings will be required in the following instances: The mark is a word composed of any lower case lettering and the lower case lettering is a feature of the trademark. The word(s) appears in any special arrangement other than on horizontal lines. A claim to specific colour or colours is made in respect of the whole or part of the mark and the drawing is lined for colour. The word(s) includes foreign language accents other than those used in the French language. Because Canada recognizes both French and English as its official languages, accents used in the French language are not considered to be design characteristics although accents in other languages may be. The mark is comprised of foreign characters. (Note: Pursuant to Rule 29, the applicant must provide both a translation and transliteration which will be included in the particulars of the application upon its advertisement in the Trademarks Journal.) Furthermore, the Office does not consider that an application for the registration of a word or words is in special form merely because it includes any of the following punctuation marks: the period (.), the question mark (?), the exclamation mark (!), the comma (,), the semicolon (;), the colon (:), the ellipsis (...), parentheses ( ), brackets [ ], quotation marks (" "), single quotation marks (' '), inverted commas ( ' '), the dash (-), the asterisk (*), the diagonal (/ \), the dollar sign ($), and the underscore ( _ ) Accordingly, the inclusion of any punctuation marks commonly found on an English or French keyboard will not render the trademark to be in special or design format.

What rules apply to trademark drawing form and size? Cite authority.

II.6.2.1 Form and Size — Rule 27(1) The Trademarks Office electronically captures all designs submitted with applications and makes these available for viewing and searching through electronic means. To help ensure that the Office can capture a good quality image of the design, the original should be produced in a high resolution and/or of a good quality. The size should be limited so as to meet the space requirements for reproduction in the Trademarks Journal. Currently, the graphical file must be in TIFF format and be smaller than one megabyte in size to be accepted by the electronic filing system. The drawing is a representation of the essential constituents of the trademark and therefore should not be enclosed in a rectangle or circle or the like, unless these are features of the mark as used or proposed for use. Neither should the following appear on the drawing: the words "Marque de fabrication", "Marque Déposée", "MD", "Trademark", "TM", "Trademark Pending" or "Trademark Registered" in full, or in abbreviated form, or the "R" symbol enclosed in a circle (®). Matter which may be associated with trademarks on the packages or containers in which goods are offered for sale, but which is not a component of the mark, should not appear on the drawing. Examples of such matter include listings of ingredients, size, weight, volume, alcoholic content, the address of applicant, phone and fax numbers. Examiners may either ask for authorization to delete such matter from the drawing on file or request a revised drawing.

What rules apply to trademark drawing colour? Cite authority.

II.6.2.2 Drawings Lined for Colour — Rule 28 Where colour is claimed as part of the trademark for which protection is sought, the applicant should so indicate by describing the colour claims and, if such description is not clear, by lining the drawing for colour in accordance with the colour chart shown below pursuant to Rule 28(2) of the Trade-marks Regulations. Stippling, light and heavy lining, shades of grey, or anything similar which may appear on the drawing will not be regarded as possible colour features of a trademark by examiners, unless there is some other indication that the color grey may be a feature of the trademark, such as the description of the mark as indicated on a certified copy of a foreign registration. Drawings Lined for Colour If the drawing furnished with the application is lined and the application contains no reference to a colour claim, examiners will inquire as to the purpose of the lining on the drawing, i.e., whether colour is a feature of the trademark. If colour is claimed as a feature of the trademark, the applicant will be required to provide a statement to the effect that "Colour is claimed as a feature of the trademark and the drawing is lined for the colour(s)..." with the specific colour or colours indicated. This statement is understood to be a claim to colour as an integral part of the trademark, and therefore will be included in the particulars of the application when advertised, and of the registration. The applicant may also respond with the statement that "The lining is a feature of the mark but does not indicate colour" or that "The lining is used to indicate shading but colour is not a feature of the mark." These statements will also be included in the advertisement of the mark and the registration particulars since they serve to clarify the purpose of the lining. If an applicant states that the drawing is lined for colour, e.g., red, but the colour red is not claimed as a feature of the mark, the statement that "The drawing is lined for the colour red but the colour red is not claimed as a feature of the trademark" which will be included in the particulars of the application upon its advertisement in the Trademarks Journal.

What rules apply to trademark specimens? Cite applicable authority.

II.6.3 Specimens — Rule 29(c) While specimens are not required to file an application, Rule 29(c) of the Trade-marks Regulations provides that the Registrar may require an applicant to furnish a specimen of the trademark as used. Specimens are required in some cases since the information provided on actual labels, packages, displays and the like may help examiners to more clearly understand the nature of the goods or services associated with the trademark. If there is any discrepancy between the trademark as applied for and the specimen submitted, examiners will request clarification before proceeding. If colour is claimed as a feature of the trademark in the application, the specimen submitted should be in the colour(s) claimed. When actual labels, containers or displays showing the trademark as used cannot be sent because of size or material limitations, photographs of the goods, labels, containers, etc., will suffice. Specimens such as stampings, dies, invoices, or mailing labels may be acceptable as long as they show the trademark as used. Applicants should not send valuable items or containers such as aerosol spray cans, the former because they risk being damaged or lost, the latter because they are dangerous if punctured or exposed to heat. Business cards or letterheads may be submitted as specimens to show trademark use in association with goods or services. An applicant may also submit a flyer or an invoice as long as it shows the mark as used in association with the goods or services.

Describe the Nice Classification system generally.

II.6.4 Nice Classification The Nice Classification is an international classification of goods and services consisting of a list of 34 classes for goods and 11 for services established by the Nice Agreement. Trademark examiners will conduct research on how goods and services are used in the trade in order group them according to the classes of the Nice Classification. While goods or services must be stated "in ordinary commercial terms" and "specific", even where goods or services are considered to comply with paragraph 30(a), additional details may be required in order to be grouped according to the classes of the Nice Classification. The Goods and Services Manual should always be consulted in order to ascertain the exact classification of goods or services. However, for goods or services not found in the Manual, examiners will consult the Class Headings and Explanatory Notes, as well as the General Remarks of the Nice Classification to determine the appropriate class for particular goods or services.

What rules apply to grouping goods or services according to their Nice classification?

II.6.4.1 Grouping Goods and Services According to the Nice Classification Goods or services that could have a number of uses should generally be classified in a single class according to their primary function. If goods or services are normally in a particular class, applicants cannot obtain registration in another class merely by identifying a use or purpose for which the goods or services could then fall into another class or classes. For example, "essential oils" are classified in Class 3. This cannot be in Class 1 even if the applicant indicates that it is used in the manufacture of other finished products. An "essential oil" is always placed in Class 3 regardless of its ultimate use. However, if it can be shown that goods or services could have a number of uses, then two or more classes could be appropriate. The statement of goods or services must clearly indicate the basis for the multiple Nice classification with language that is appropriate to the respective classes. For instance, the identification of "clock radios" could be classed in Class 9 with respect to "radios" and "Class 14" with respect to clocks. Examiners should not question the classification by an applicant as long both indicated classes are correct; or the individual goods or services are in an appropriate class. In this case, either Class 9 or 14 or both would be appropriate. However, where applicants have not indicated an appropriate class, examiners will need to request confirmation. For example, if the "clock radio" is primarily a radio which incorporates a clock (in Class 9) or if it is primarily a clock which incorporates a radio" (in Class 14), a "clock radio" cannot be placed in any other class. Services are typically classified according to the branches of activities and their field of use. However, certain services can be placed in multiple classes on the basis of the purpose for which the services activity is rendered. In those cases, the purpose of the activity will determine classification. For example, the term "business planning" which would normally be in Class 35, but if it concerns any financial aspect of "business planning" then it could be placed in Class 36. Since the Goods and Services Manual accepts "business planning" as acceptable, examiners will not question the services if the applicant has placed "business planning" in Class 35. Where the applicant has not indicated an appropriate class, examiners will request an applicant confirm the purpose for which the service is being rendered. For example, an examiner will require further clarification of the services if an applicant places "business planning" in Class 36, as it will be necessary for the applicant to identify the type of business planning being done to justify its placement in this class, such as "business planning, namely, investment planning".

What Nice rules apply to material composition?

II.6.4.1.1 Material composition As mentioned above, a finished product is typically classified according to its function and purpose. However, if a statement of goods is specific, but the goods could be placed in more than one class depending on the material composition, then the applicant should identify the material composition of the good. For example, while the goods "statues" are considered to be in ordinary commercial terms for specific goods, they must be further defined in order to be grouped into the appropriate class. The classification of goods such as "statues" will depend upon its material composition. For example, "statues of non-precious metal" in Class 6; "statues of precious metal" in Class 14; statues made of wax, wood, plaster, or plastic would fall into Class 20; and "statues made of glass or porcelain" in Class 21. However, where an item is made for a particular industry, despite the fact that knowledge of that industry would indicate that the goods would be made from various materials, the precise material composition may not be required. For instance, structural parts of an automobile can be made of metal or plastic, but an examiner would not question the material composition of the parts, since automobile parts would be placed in Class 12.

What are acceptable statements of goods and services pertaining to intangibles?

Intangibles such as "Web sites", "electricity", "domain names", "steam", and "waste gas" should not be listed in a statement of goods since they are considered to be services, such as the following from the Goods and Services Manual: "website design", "web hosting", "energy recycling services that capture and converts wasted energy into electricity and useful steam", "selling domain names", "domain name registration", and "waste gas treatment services". Where an application lists such intangibles in the statement of goods, and it appears that the applicant may actually be offering services, the examiner will so advise the applicant.

What rules apply to inactive agents?

No correspondence should be sent to or received from an inactive agent. An "inactive agent" is an agent whose name has been removed from the list of trademark agents pursuant to Rule 22(3) of the Trade-marks Regulations. In such cases a letter should be sent directly to the applicant to inform them of the situation. The correspondence will be sent directly to the applicant, a copy of which will be sent to the inactive agent, indicating that the Trademarks Office cannot correspond with the agent since the agent is inactive. Please note that examiners must amend the correspondence MANUALLY to indicate the applicant's name and address instead of the agent's. In all cases, should the agent be inactive but a representative for service is appointed on the file, the Office will correspond with the applicant c/o the representative for service.

Can a revised statement of goods be broader than the original specification? Cite applicable authority.

No, s. 31(e) Regulations

What formal requirements are considered after processing a trademark application?

Once the application for registration of a trademark has been processed by the Formalities Section of the Trademarks Office, examiners begin the initial examination, in part to ensure that all the formal requirements of the application form have been satisfied as set out in section 30 of the Trade-marks Act. See also the section entitled "General" in the Trade-marks Regulations. As part of the initial examination, examiners will also assess goods or services that have been grouped according to the classes of the Nice Classification.

What rules apply to word descriptions of trademark colour?

Paragraph 30(h) of the Trade-marks Act provides that unless a trademark application is for word(s) not depicted in special form, it must contain a drawing of the trademark and such number of accurate representations of the trademark as may be prescribed. If the applicant claims colour(s) as a feature of the trademark, Rule 28 of the Trade-marks Regulations requires that the said colour(s) must also be described. In Apotex Inc. v. Searle Canada Inc. (2000), 6 C.P.R. (4th) 26 (F.C.T.D.), Rouleau J. set out the rationale behind paragraph 30(h) and the requirement for precision in a trademark application: The onus is on the applicant for a mark to show its compliance with this requirement of the legislation. The drawing submitted must be a meaningful representation of the applicant's mark in the context of the written description appearing in the application .... The rationale behind these statutory requirements is that a trademark registration is a monopoly and must therefore be precise in terms of its scope. Where the colour claim is for a colour not found in Rule 28 of the Trade-marks Regulations, if applicable, the applicant is required to include a description of the colour code and reference system for each colour(s) claimed. Should the name of the colour system be the subject of a registered mark, the name of the colour system must be set out in uppercase letters and must include the statement that the name of the colour system is a registered trademark. The following is an example of an acceptable description: "the colour turquoise (PANTONE 15-5519)" is claimed as a feature of the mark. "PANTONE is a registered trademark". While the Office does not endorse or recommend any one colour identification system, any colour reference used should be easy to identify and reproduce by the general public. If the application contains a colour description which is readily visualized and clear, examiners will not require lined drawings. Example 1: "The upper band is yellow. The central band is green. The lower band is red." Example 2: "The letters are blue on a white background. The lower panel is red with the leaf in white." If, however, the application contains a colour description that is not readily visualized, examiners will request that lined drawings be furnished. Example: "The leaves and border are green and orange. The flowers and ribbon are pink, yellow and mauve." --- Colour Claims: PANTONE Publication Date: 2010-12-22 Where an applicant claims colour(s) as a feature of the trademark, pursuant to Rule 28(1) of the Trade-marks Regulations the said colour(s) shall be described. Where the colour claim is for a colour not found in Rule 28 of the Trademarks Regulations, the Registrar may require the applicant to include a clear description and may wish to reference a colour system for each colour(s) claimed. Should the name of the colour system be the subject of a registered mark, the name of the colour system must be set out in uppercase letters and must include the statement that the name of the colour system is a registered trademark. The following would be an example of an acceptable description: "the colour turquoise (PANTONE 15-5519)* is claimed as a feature of the mark. *PANTONE is a registered trademark". A reference to a colour system alone (i.e. PANTONE 32) is not acceptable. The applicant must include both a description of the colour that is claimed and make reference to the colour system. While the Office does not endorse or recommend any one colour identification system, any colour system used should be easy to identify and reproduce by the general public. When the applicant does not make reference to a colour system, he must provide a clear description of the colour(s) that is/are claimed as feature of the trademark. For example, a claim to the colour "magenta" would be acceptable however, "greyish green" or "purplish blue" would not be acceptable as neither the Office nor third parties would be able to accurately assess the colour(s) being claimed.

How can you reference other Nice classes of goods and services?

Reference to other classes Care must be taken to avoid statements such as "transport services of all goods in Classes 32 and 33" or "computer software in the field of services in Classes 41 and 45" are not acceptable. While "transport services" and "computer software" can still be grouped according to the classes of the Nice classification, these statements are not considered to be in ordinary commercial terms for specific goods or services. The applicant must state the goods being covered in Classes 32 and 33, e.g., "food transportation services" and must identify the services in Classes 41 and 45, e.g., "computer software for computer virus protection". The exclusion of other classes, such as "goods not included in other classes", is also not acceptable since such wording is not considered to be ordinary commercial terms for specific goods.

What rules apply to trademark agents?

Rule 2 defines a trademark agent as a person whose name is entered on the list of trademark agents referred to in Rule 21 of the Trade-marks Regulations. Rule 8(2) provides that correspondence concerning the prosecution of the application will be with a trademark agent, where the trademark agent has been authorized to act on behalf of the applicant in one of the following ways: the trademark agent files the application with the Registrar as the agent of the applicant; the trademark agent is appointed as the agent of the applicant in the application or an accompanying document; or the trademark agent is appointed as the agent of the applicant after the application is filed. As per Rule 11(1), the appointment of a trademark agent need not be made in writing, but the Registrar may require the agent to file a written authorization from the person or firm that the agent claims to represent, where the circumstances described in any of Rules 8(2)(a) to (c) have not occurred or the appointment has not been clearly established. Note: Rule 9 provides that where a trademark agent is not a resident of Canada, the agent shall appoint an associate agent who is a resident of Canada, and where an associate trademark agent is not appointed, the Registrar shall correspond with the applicant.

What provision allows for (1) registration and (2) supporting evidence to accompany an application for a mark that, while being objectionable under s. 12 (individual's name or descriptive, etc.) - is "not without distinctive character"?

S. 14 (1)(B) (if registered abroad) s. 31(2) (applications based on registrations abroad)

When must colour be specified in a trademark application, and when must it be specifically included as a literal colour? Cite applicable authority and the key consideration in determining whether the actual colour must be outlined in the application or subsequent response to Examiner's report.

S. 28(1) Regulations, I would advise my client that if they are claiming COLOUR as a feature of their mark (i.e. black adidas stripes, yellow nike swoosh) that the colour should be described. The Registrar may *require* that colour be depicted in striped lines in accordance with s. 28(2) if *the provided description is unclear*. This is the key threshold that must be provided to gain maximum points. - *Always also cite generally the Trademarks Office Examination Manual.*

What rules apply to representatives for service?

Section 2 of the Trade-marks Act defines a representative for service as the person or firm named under paragraph 30(g), subsection 38(3), paragraph 41(1)(a) or subsection 42(1) of the Trade-marks Act. Paragraph 30(g) requires that if the applicant has no office or place of business in Canada, the applicant must provide 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. Note: Since Rule 8(1) of the Trade-marks Regulations provides that "correspondence relating to the prosecution of an application for the registration of a trademark shall be with the applicant," a representative for service cannot act on behalf of the applicant. Therefore, where a trademark agent has not been appointed, correspondence concerning the prosecution of the application will be with the applicant, in care of the address of the representative for service. If paper or electronic correspondence is received from the representative for service, a letter should be sent directly to the applicant to inform them of the situation, a copy of which will be sent to the representative for service, indicating that the Trademarks Office can only correspond with the applicant or their agent. In such cases, and if the applicant's response date has lapsed, the applicant will be considered in default in the prosecution of the application and will be granted a two-month period to provide a proper response. If the applicant's response date has not lapsed, the applicant will still be considered in default in the prosecution of the application, however will have the remainder of the period to provide a proper response.

How can you request early examination?

Trademark applications are generally examined in order, according to the filing date of the application. The advancement of an application out of routine order creates a favoured position at the expense of all other applicants, and the Registrar will not consider requests for expedited examination. See also Practice Notice on Expedited Examination: This notice is intended to provide guidance on current practice of the Office of the Registrar and interpretation of relevant legislation. However, in the event of any inconsistency between these notices and the applicable legislation, the legislation must be followed. This practice notice replaces the practice notice entitled Requests for Expedited Examination published February 23, 2000. Effective immediately and given that examination generally occurs within six months of the date a trademark application is filed, the Registrar will no longer consider requests for expedited examination.

What are unacceptable statements of goods and services pertaining to pharmaceuticals?

Unacceptable statements By way of example, the following statements of goods are not considered acceptable since each statement encompasses an array of diseases which exhibit disparate symptoms treatable by a wide variety of types of medications: pharmaceutical preparations for the treatment of infectious diseases; pharmaceutical preparations for the treatment of viral diseases; pharmaceuticals for the treatment of inflammatory diseases; pharmaceuticals for the treatment of psychiatric diseases/disorders; pharmaceutical preparations for the treatment of neurological diseases/disorders; pharmaceutical preparations for the treatment of the central nervous system; pharmaceutical preparations for the treatment of the immune system; pharmaceutical preparations for the treatment of the nervous system; pharmaceutical preparations for use in dermatology; pharmaceutical preparations for the treatment of the genitourinary system;

Is advertising on a publicly accessible website declared under s. 9 sufficient to support a claim for enforceability of rights under s. 9 of the Act?

Yes

Is the Office required to maintain a list of geographical indications? If an objection is raised to your client's trademark application, must an examiner provide information pertaining to protected geographical indications?

Yes and yes.

Must colour be claimed in an application relying on a foreign registration for priority where colour is claimed? Cite applicable authority.

Yes, s. 30(d) of the Trademarks Act requires that where the application is based on a foreign registration or application, its particulars must be provided and if no prior use in Canada, must reflect - *Always also cite generally the Trademarks Office Examination Manual.*