Trade-Marks Examination Manual (page 4 of 55)
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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 and identifying the manner of trade-mark use, the 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 s 30(b) to 30(f) of the Trade-marks Act.
The Office does not supply pre-printed forms. An application for the registration of a trade-mark shall be presented in the manner specified by the Registrar in the Trade-marks Journal and on the appropriate form published by the Registrar in the Journal or in any other form that allows for the furnishing of the same information. A combination of two or more of the forms outlined below could be used, depending on the circumstances.
Form l is for seeking registration of a trade-mark in use in Canada. See subsection 16(l).
Note: An application for registration of a trade-mark which is a distinguishing guise (section 13), or for a trade-mark which is alleged to have acquired distinctiveness pursuant to subsection 12(2), must be completed in accordance with Form l.
Form 2 is for seeking registration of a trade-mark made known in Canada. See subsection 16(l).
Form 3 is for seeking registration of a trade-mark registered and used abroad. See subsection 16(2).
Note: This form may also be used by a person seeking registration based on a trade-mark which has been applied for and used abroad.
Form 4 is for seeking registration of a trade-mark which the applicant intends to use in Canada by itself, or through a licensee, or by itself and through a licensee. See subsection 16(3).
Form 5 is for seeking registration of a certification mark used in Canada. To register a certification mark registered and used abroad, a combination of Forms 3 and 5 must be used.
Form 7 is for use by the owner of a registered mark who is applying to amend the registration by extending the statement of wares or services covered by the registration to include additional wares or services. See paragraph 41(l)(c).
Note: Form 6 has not been included above because it is not for use by persons seeking registration of trade-marks. It is a guide for registrants seeking to make certain amendments to the register.
II.5 Contents Common to All Applications
II.5.1 Identification and Description of the Mark — Paragraph 30(h), Rule 24, Paragraph 2, Forms
An application for registration of a trade-mark must cover only one trade-mark. See Rule 24.
Paragraph 2 of the model form reads:
The trade-mark is __________________.
If the trade-mark is for a word mark only, it should be presented in capital letters or block letters throughout.
The trade-mark applied for must be shown in a drawing if it consists of:
- A word or words in special form.
- A word or words in a combination of upper- and lower-case lettering and the combined lettering is a feature of the trade-mark.
- A word or words which incorporate foreign accent marks such as the German umlaut or the Spanish tilde. (Trade-marks in ordinary block letters which incorporate words alone featuring French or English accents or punctuation will not be considered design marks.)
- A composite mark comprising word and design elements.
- A mark comprising foreign characters.
- A word or words in colour (when colour is claimed as part of the mark).
See sections II.6.2. and II.7.1.1 of this manual.
If the trade-mark is a design, the phrase "is shown in the accompanying drawing" should be inserted and the drawing annexed to the application form. The trade-mark should not be described. Examples such as the following would not be acceptable:
- The trade-mark is the word AJAX in fancy lettering.
- The trade-mark consists of the word AJAX and a star.
- The trade-mark consists of the word AJAX and a star as shown in the attached drawing.
Any of the foregoing are properly described by: "The trade-mark is shown in the attached drawing. "
The following are also examples of what the examiners should not accept.
- The applicant indicates willingness to accept registration of any of the following trade-marks:
- 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)
- Fabulicious (third choice)
If an application is filed wherein the trade-mark is composed in whole or part of words in more than one language, the trade-mark must be used exactly in the manner in which it is set out in association with the wares and/or services. Registration No. 224,146 provides such an example, the trade-mark 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 wares exactly in the manner in which it is set out here; the three versions cannot be used separately but must be used together. However, if the mark is composed of two separate versions in two languages, and where those versions are to be used separately in association with wares/services, the applicant must apply to register two marks.