Practice Notice: Descriptiveness and Terms Such as .com, .ca, .fr, .uk & .us, Publication Date: 1999-09-01

Descriptiveness and Terms Such as .com, .ca, .fr, .uk & .us

Publication Date: 1999-09-01

Registrability

Trade-marks consisting of or containing terms such as: .com, .ca, .fr, .uk & .us are examined for any clearly descriptive or deceptively misdescriptive meanings, in English or French, as applied to the character or quality, place of origin, conditions of, or persons employed in the production of the associated wares or the performance of the services.

The Office considers these terms to mean:

.com commercial entity
.ca Canada
.fr France
.uk United Kingdom
.us United States

A trade-mark that consists of or contains one of these terms is considered unregistrable pursuant to paragraph 12(1)(b) of the Trade-marks Act, if the trade-mark when considered in its totality, as a matter of first impression in association with the wares and/or services is clearly descriptive or deceptively misdescriptive. Therefore, the addition of one of these terms to a clearly descriptive mark will not make it registrable.

In deciding whether a trade-mark is clearly descriptive or deceptively misdescriptive, it must be determined what first impression the mark would create upon the everyday user or purchaser of the wares and/or services. (Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25 and Mitel Corporation v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202.

When disclaimer required

Where a trade-mark in its totality is registrable and contains one of the aforementioned terms, a disclaimer of the term is required if the term when considered in association with the wares and/or services, forms a portion that is not independently registrable within the meaning of paragraph 12(1)(b) of the Act.

If the term is deceptively misdescriptive and forms a significant part of the trade-mark, the mark in its totality is deceptively misdescriptive and therefore unregistrable having regard to paragraph 12(1)(b) of the Act. (Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103).