trade marks act registrability s 12 n.
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Trade-marks Act Registrability: s. 12. Registrable & Entitlement to Register. Distinguish Is the mark registrable? This is a characteristic of the mark Who is entitled to registration? Who is the owner of the mark. Registrability. Marks are generally registrable unless excluded

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registrable entitlement to register
Registrable & Entitlement to Register
  • Distinguish
    • Is the mark registrable?
      • This is a characteristic of the mark
    • Who is entitled to registration?
      • Who is the owner of the mark
registrability
Registrability
  • Marks are generally registrable unless excluded
  • When trade-mark registrable – s. 12(1)
  • 12 (1) Subject to section 13,
    • More restrictive rules for distinguishing guise
    • Must have acquired secondary meaning, as in s. 12(2) for mark
  • a trade-mark is registrable if it is not. . .
marks not registrable
Marks Not Registrable
  • s.12 – Marks which are not registrable are not inherently distinctive for reasons which can be ascertained by the Registrar
    • Surnames, marks descriptive in French or English
      • 12(a)(b)
    • Generic: the name of the wares in any language
      • 12(c)
    • Mark / Quasi-mark owned by another
      • 12(d) - (i)
    • Functional marks
      • Case-law
functionality
Functionality
  • Functionality
    • A mark may serve some functional purpose other than identifying the source of the ware
    • Ie a distinctive shape makes a bottle easier to grasp
  • Case-law establishes that functionality is a ground for opposition or refusal by Registrar
    • Functionality as a bar is not found expressly in the Act
    • Affirmed as a ground for invalidity in Kirkbi and Lego Canada v Ritvik Holdings 2003 FCA 297, affm’d 2005 SCC 65
generic
Generic
  • Generic mark
  • (c) the name in any language of any of the wares or services in connection with which it is used or proposed to be used;
    • Inherently not distinctive
    • Not registrable
descriptive marks
Descriptive Marks
  • (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;
  • (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptivein the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
    • Inherently not distinctive
      • Normally describe the wares or the vendor
acquired meaning
Acquired Meaning
  • A trade-mark that is descriptive or deceptively misdescriptive is prima facie unregistrable
  • May be registered if it has in fact acquired distinctiveness as a mark: s.12(2)
    • In which case it is registered only for the geographical area in which it is distinct: s.32
acquired meaning1
Acquired Meaning
  • S.12(2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration
  • S.32 [In the case of a mark which is registrable under s.12(2) or 13 (distinguishing guise)] (2) The Registrar shall restrict the registration to the wares or services in association with which the trade-mark is shown to have been so used as to have become distinctive and to the defined territorial area in Canada in which the trade-mark is shown to have become distinctive
acquired meaning2
Acquired Meaning
  • Carling v Molson (”Canadian”)
    • Onus is on the party wishing to take advantage of s.12(2) to show that the mark has acquired distinctiveness
deceptively misdescriptive
Deceptively Misdescriptive
  • 12 (1) Subject to section 13, a trade-mark is registrable if it is not
  • (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptivein the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
deceptively misdescriptive1
Deceptively Misdescriptive
  • The old act prohibited registration of a mark which was “clearly misdescriptive”
  • The problem was that a mark which is clearly misdescriptive may be very distinctive for that very reason: eg “Orange grass” for grass seed for green grass
  • Now it must be “deceptively” misdescriptive
    • EgKool One
summary
Summary
  • Abercrombie provides a useful taxonomy
    • (1) generic – the name of the wares: shredded wheat
    • (2) descriptive – descriptive of the wares: Canadian beer
    • (3) suggestive – Alpine beer
    • Arbitrary (a real word applied out of context)
    • (4) fanciful (not a real word – eg Exxon)
summary1
Summary
  • (1) Generic marks cannot be registered
    • While descriptive terms can acquire meaning, s.12(2) does not make exception for the name of the wares which are not registrable under s12(1)(c)
  • (2) Descriptive marks are prima facie unregistrable: s.12(1)(b)
    • But can acquire secondary meaning, s12(2) If application is made under s.12(2) registration will be granted only with respect to defined territorial area in which mark has acquired secondary meaning: s.32
summary2
Summary
  • (3) Suggestive marks are not descriptive and are entitled to registration
  • (4) Fanciful or arbitrary marks are also entitled to the registration
    • The only difference between suggestive and fanciful marks is that it may be easier to establish infringement because there will be no question that the mark is being used as a mark rather than descriptively
examples
Examples
  • “Cool” is not descriptive of beer, only suggestive
      • Provenzano
  • “Golden” is descriptive of beer
      • Labatt v Molson
    • “Golden” had apparently acquired meaning, but s.12(2) had not been argued
  • “Cool” is not misdescriptive, despite the fact that “Kool one” beer is not permanently cold
home juice v orange maison
Home Juice v Orange Maison
  • Illustration of a descriptive mark: Orange Maison for orange juice
  • Note that the owner of Orange Maison was able to rely on (now) s.12(2) to save the mark on the basis of acquired meaning, but only within the province of Quebec (s.32)
noshery
Noshery
  • A suggestive mark is not descriptive
mark owned by another
Mark Owned by Another
  • 12 (1) Subject to section 13, a trade-mark is registrable if it is not
  • (d) confusing with a registered trade-mark;
    • Only registered mark
    • If a mark is confusing with an unregistered mark it may be registrable
      • But only by the owner of the unregistered mark: s.16
associated marks
Associated Marks
  • 15. (1) Notwithstanding section 12 or 14, confusing trade-marks are registrable if the applicant is the owner of all such trade-marks, which shall be known as associated trade-marks.
prohibited marks variety names
Prohibited Marks & Variety Names
  • (e) a mark of which the adoption is prohibited by section 9 or 10;
    • S. 9 Prohibited marks – Red Cross/Crescent, National Flags
    • S. 10 Mark which by usage has come to denote quality, place of origin etc of wares eg “Canada Fancy”
  • (f) a denomination the adoption of which is prohibited by section 10.1;
    • Plant variety name under Plant Breeders’ Rights Act
  • Nor can these marks be used even as unregistered marks: s.10.1, 11
olympic marks
Olympic Marks
  • (i) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and Paralympic Marks Act, a mark the adoption of which is prohibited by subsection 3(1) of that Act
    • Exceptions for Olympic Committee and licensees
    • Olympic athletes
    • Prior users
protected geographical indication
Protected Geographical Indication
  • DOC – Cf. ‘Extended passing off’
  • (g) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a wine not originating in a territory indicated by the geographical indication; and
  • (h) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication
geographical indications
Geographical Indications
  • Nor can protected geographical indications be used as unregistered marks
    • S.11.14 /15
  • Geographical indications must be listed to be protected
    • Procedure for listing is initiated by Minister
    • Opportunity for objection
    • S.11.12 / 13
geographical indications1
Geographical Indications
  • Some indications are deemed generic
  • s. 11.18(3) Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h), nothing in any of those provisions prevents the adoption, use or registration as a trade-mark or otherwise, in connection with a business, of the following indications in respect of wines:
    • (a) Champagne; (b) Port; (c) Porto; (d) Sherry; (e) Chablis;
  • Burgundy & Bourgogne were once deemed generic, removed in 2004
registration s 16
Registration: s.16
  • You are entitled to registration if (s.16(1))
    • The mark is registrable (s. 12), and
    • The mark yours
  • The mark is yours if
    • You have used it or propose to use it, and
    • It is not confusing with someone else’s prior mark
entitled to registration
Entitled to Registration
  • s.16(1)Any applicant who has filed an application. . .for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled . . . to secure its registration in respect of those wares or services, unless
in respect of
In respect of
  • s.16(1) . . . to secure its registration in respect of those wares or services,
  • A trade-mark is registered in respect of specific wares and services only
  • . . .that he. . .has used in Canada or made known in Canada in association with wares or services.
  • The mark must have been used or proposed use by the applicant in association with those wares or services
the mark is yours
The Mark is Yours.
  • Three ways to establish the mark is yours
    • Use or made known in Canada: s.16(1)
    • Registered and used abroad: s.16(2)
    • Proposed use: s.16(3)
used or made known in canada
Used or Made Known in Canada
  • 16. (1) . . .that he or his predecessor in title has used in Canada or made known in Canada . . .
  • Use is sufficient
    • It is not necessary to establish a reputation
    • Unless the mark is not inherently distinctive
  • Made known in Canada
    • E.g. through use in US
registered and used abroad
Registered and used abroad
  • 16(2) . . .the applicant . . .has duly registered in or for the country of origin of the applicant and has used in association with wares or services. . .
  • Need not be known in Canada so long as registered and used in applicant’s home country
proposed use
Proposed Use
  • 16(3) Any applicant who has filed an application . . . for registration of a proposed trade-mark . . .
  • You may file an application for a proposed markyou must use it before it is actually registered: see s.40(2)
    • Application reserves the mark until you use it
    • Time restrictions in s. 40
unless
“Unless”
  • You are not entitled to register a mark which is confusing with someone else’s prior mark
    • Prior registered marks
    • Prior unregistered marks and name
    • Prior applied for marks
prior registered mark
Prior Registered Mark
  • 12(1). . .a trade-mark is registrable if it is not (d) confusing with a registered trade-mark
    • A mark that is confusing with a prior registered mark is not registrable except by the owner of the prior mark
      • Associated marks
prior unregistered mark or trade name
Prior Unregistered Mark or Trade Name
  • Registrable, but only by owner of unregistered mark
    • 16(1) . . .unless at the date on which he. . .first so used it. . .it was confusing with
      • (a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
      • (c) a trade-name that had been previously used in Canada by any other person
  • Note that (a) includes unregistered trade-marks
    • See the definition of “trade-mark”
prior pending mark
Prior Pending Mark
  • Or a mark which is confusing with someone else’s pending trade-mark
  • 16(1)(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
  • In effect, a first to file priority for registration for new marks
    • This is why proposed mark reserves mark
prior pending mark1
Prior Pending Mark
  • First to file does not guarantee the registration will issue
    • Lack of distinctiveness may prevent first to file from gaining registration: see s. 38(2)(d)
    • In which case no one is entitled to registration
unless unless
Unless, unless
  • Exception to “unless”
  • Entitlement unaffected by prior abandonded mark
  • 16(5) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous use or making known of a confusing trade-mark or trade-name by another person, if the confusing trade-mark or trade-name was abandoned at the date of advertisement of the applicant’s application in accordance with section 37.
registration process
Registration Process
  • 37 (1) The Registrar shall refuse an application for the registration of a trade-mark if he is satisfied that
    • (a) [the application is not in proper form]
    • (b) the trade-mark is not registrable, [s.12] or
    • (c) the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending, [para (c) refers to s.16(1)(b) only]
registration process1
Registration Process
  • Even though the Registrar does not refuse the application under s.37, the mark is not automatically registered
    • s.37(1) . . . and where the Registrar is not so satisfied, he shall cause the application to be advertised in the manner prescribed
  • It is advertised in the Trade-Marks Journal (an official publication of the Office of the Registrar)
    • The Trade-marks Journal is regularly reviewed by trade-mark agents on their clients’ behalf, to determine whether applications have been made for confusing marks
opposition
Opposition
  • The advertisement process give other parties two months to object
    • 38 (1) Within two months after the advertisement of an application for the registration of a trade-mark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar
opposition registrability
Opposition - Registrability
  • Opposition is normally by an owner of a conflicting mark
    • Some grounds of opposition are open only to the owner of the opposing mark
    • E.g. Prior use of a confusing mark or trade-name: s. 17
opposition registrability1
Opposition - Registrability
  • Opposition is allowed in addition to examination for two reasons
    • The opponent typically has more at stake than the Registrar
    • The opponent may have more information than the registrar
      • Particularly with respect to unregistered marks
opposition registrability2
Opposition - Registrability
  • The opponent may challenge on the basis that the mark is not registrable notwithstanding that the Registrar has already reviewed this issue
  • This allows the opponent to present new arguments
  • And the opponent may appeal from a rejection of its opposition
    • So the opponent had a chance to make the argument re registrability before a court
opposition1
Opposition
  • 38(2) A statement of opposition may be based on any of the following grounds:
    • (a) [Form of the application]
    • (b) that the trade-mark is not registrable [s.12];
    • (c) that the applicant is not the person entitled to registration of the trade-mark [s.16]; or
    • (d) that the trade-mark is not distinctive
  • Grounds (a), (b) are also grounds for refusal by Registrar under s. 37(1)(a),(b)
  • Para 38(2)(c) is similar to 37(1)(c), but broader
    • Refers to s.16(a) & (c) (used name/mark) as well as (b) (prior application)
  • No equivalent to (d) under 37(1)
process
Process
  • Note that the Registrar can refuse the mark
    • When the person is not entitled because the it is confusing with a pending application: cf s.16(1)(b))
    • When it is confusing with a registered mark (s.12)
    • But not when it is confusing with an unregistered mark or trade-name: s.16(1)(a)(c)
process1
Process
  • Only the opponent can oppose on the basis of s.16(1)(a),(c)
    • The Registrar has no way of knowing whether an confusing unregistered mark exists
    • And the opponent must be the owner of the opposing mark to oppose on this basis: s.17
opposition2
Opposition
  • Mark may lack distinctiveness because
    • It inherently lacks distinctiveness (eg generic mark)
      • s.12
    • It lacks distinctiveness in fact because it has been used by more than one source: s. 38(2)(d)
  • 38(2)(d) – lack of distinctiveness in fact, available only to opponent
    • Registrar can refuse for confusion with registered mark: 12(d)
    • Or because generic etc (12(a)(b))
    • Opponent can oppose for confusion with unregistered mark under s.38(2)(d)
registration
Registration
  • After the period for opposition has expired (two months after advertisement)
    • or after an opposition is decided in favour of the applicant
  • The trade-mark is registered: ss.39,40
  • In respect of those wares for which the application was made
    • Applicant must have used the mark in association with those wares
    • Proposed mark is not registered until actually used
prior user
Prior User
  • Suppose the applicant was not entitled to registration because the mark was confusing with your unregistered mark
  • But you didn’t have a trade-mark agent scanning the journal and you missed the opposition period
invalidity1
Invalidity
  • A registration is invalid if the mark
    • Was unregistrable
    • Is lacking distinctiveness
    • Wasn’t the owner’s mark
invalidity2
Invalidity
  • 18 (1) The registration of a trade-mark is invalid if
    • (a) the trade-mark was not registrable at the date of registration,
    • (b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced, or
    • (c) the trade-mark has been abandoned,
  • and subject to section 17, it is invalid if the applicant for registration was not the person entitled to secure the registration
entitlement
Entitlement
  • Only the owner of a prior mark can oppose on the basis of entitlement: s17(1)
  • 17(1) No application for registration of a trade-mark . . . shall be refused and no registration of a trade-mark shall be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trade-mark or trade-name by a person other than the applicant for that registration or his predecessor in title, except at the instance of that other person or his successor in title, . . .
not registrable not entitled
Not Registrable / Not Entitled
  • 18 (1) The registration of a trade-mark is invalid if
    • (a) the trade-mark was not registrable at the date of registration,
    • and subject to section 17, it is invalid if the applicant for registration was not the person entitled to secure the registration
  • These are the same grounds as for opposition
    • What is the difference?
      • (So far as the prior user is concerned)
section 17
Section 17
  • The owner of a prior mark only has 5 years to object on the basis for entitlement: s17(2)
five year re entitlement
Five Year re Entitlement
  • 17(2) In proceedings commenced after the expiration of five years from the date of registration of a trade-mark . . .no registration shall be expunged or amended or held invalid on the ground of the previous use or making known referred to in subsection (1), unless it is established that the person who adopted the registered trade-mark in Canada did so with knowledge of that previous use or making known
within 5 year limit
Within 5 year limit
  • Suppose prior user acts within 5 year limit
    • What is the difference between invalidity and opposition?
  • Burden of proof
  • Costs
within 5 year limit1
Within 5 year limit
  • Burden of proof
    • Under s.16 the applicant has the burden of showing entitlement to registration
    • Under s.17 the party attacking the mark has the burden of showing prior use
  • 17(1) . . . and the burden lies on that other person . . .to establish that he had not abandoned the confusing trade-mark or trade-name at the date of advertisement of the applicant’s application.
within 5 year limit2
Within 5 year limit
  • Costs
    • No costs awarded on opposition
    • Costs follow the cause in invalidity
  • Should you wait for costs reasons, if you’re pretty sure you can win?
distinctiveness
Distinctiveness
  • "distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;
  • Distinctiveness is not a condition for registrability
    • Though some specific grounds for lack of distinctiveness are
    • E.g. generic
  • Distinctiveness is a ground for invalidity or opposition
    • This means that the opponent but not the registrar can object on this basis
distinctiveness1
Distinctiveness
  • A mark which is inherently not distinctive (eg descriptive) may acquire distinctiveness through use
    • Cf Secondary meaning in passing off
distinctiveness2
Distinctiveness
  • Conversely, a mark which is distinctive may lose distinctiveness and become invalid: s18(1)(b)
  • 18 (1) The registration of a trade-mark is invalid if (b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced, or
    • This can happen if the owner does not police the use of the mark by others; ie the owner allows others to use its mark as their own mark
examples2
Examples
  • All examples assume same mark, same wares
  • Mark otherwise registrable
  • Consider
    • Can A successfully oppose B’s registration?
    • Can A successfully bring an action for invalidity against B (if A misses opposition period)
    • If A can oppose / invalidate B’s registration, can A register?
example 1
Example 1
  • A
    • 1stuser
    • Established reputation
  • B
    • 2nd user
    • No reputation
  • B files application 1st
example 2
Example 2
  • A
    • 2nduser
    • Established reputation
  • B
    • 1st user
    • No reputation
  • B files application 1st
registered v unregistered mark
Registered v Unregistered Mark
  • A passing off action cannot be sustained if the defendant’s mark is registered
  • What recourse does the plaintiff have?
  • Is either “Molson Export” or “Oland Export” distinctive?
act v passing off
Act v Passing Off
  • “Oland Export Ale” is a registered mark
  • Can Molson bring a passing off action against Olands based on “Molson Export”?
  • No: A registered marks is a “complete answer” to an action for passing off
    • The owner has a positive right to use the mark
    • Not just a right to exclude others