Trade-Marks Examination Manual (page 2 of 55)
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I Introduction
General Information
This manual is designed to serve the needs of the Trade-marks Office, specifically, staff in the Examination Section. The Trade-marks Office — a branch of the Canadian Intellectual Property Office (CIPO) — is the official government body which receives and processes all applications submitted both by individuals and companies who wish to register their trade-marks.
While registration is not essential to use of the mark — many have been used extensively in the marketplace without being registered — the benefits that accrue to the owner of a registered trade-mark make registration highly desirable. For example, a registration may form the basis of an action for trade-mark infringement wherein the plaintiff's (registrant's) rights in the mark are easily shown. Without a registration the plaintiff would be restricted to attempting to prove passing off.
The processing of a trade-mark application involves various stages in the Trade-marks Office and includes: acknowledgement, indexing, examination, prosecution, advertising, opposition and registration or refusal. For the examiners, the initial contact with an application involves verification that certain administrative requirements have been satisfied. Examiners undertake a thorough examination of the trade-mark. In so doing, they are guided by the provisions of the Trade-marks Act. But while the Act provides the basic judicial directives concerning the registrability of marks, it is, by its very nature, insufficient for use as a reference text.
This manual incorporates the interpretation of provisions of the Trade-marks Act and the Trademarks Regulations by the Courts and should therefore reduce the time needed to process applications by clarifying the statutory guidelines necessary to examine them. In addition, and perhaps more importantly, its use should result in more consistent decision making.
While it is impossible to predict or adequately discuss every problem which may arise during examination, we hope to have dealt with the most important aspects of the examination process and that the manual will meet examiners' immediate needs, and, as a result, will benefit the public.
It should be noted that this manual is a guide only and is not binding on the Trade-marks Office. The manual is in no way intended to replace the Trade-marks Act and the Trade-marks Regulations. In the case of any inconsistency between the manual and the Act and Regulations, the Act and Regulations must be followed.