Trade-Marks Examination Manual (page 5 of 55)
This manual also available as PDF
Trade-Marks Examination Manual (PDF - 1 MB - 247 pages)
Previous | Table of Contents | Next
II.5.2 Identity of Applicant — Paragraph l, Forms
II.5.2.1 General Provisions
Examiners must determine that the applicant and the owner of the trade-mark are one and the same person. They must question ownership when there is indication of use of the trade-mark by anyone other than the applicant, for example, by subsidiaries of a company. Note that, pursuant to subsection 50(1) of the Trade-marks Act, use accrues to the applicant if, under certain conditions, use of the trade-mark 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 trade-mark 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.
II.5.2.2 Individuals
When the applicant is an individual, he/she should provide a surname and at least one given name. Any trading names used should 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 applicant's own name, the examiners will require an amended application. It must name the legal owner, that is, the individual, as the applicant, followed by the trading style used.
If the examiners suspect that the applicant is not a legal entity (i.e., if Incorporated, Inc., Limited, Ltd., Corporation or Corp. is not indicated after the name), the examiners will query the point and request clarification. A written statement from the applicant or the applicant's agent to the effect that the applicant is a legal entity will suffice. The onus rests ultimately with the applicant to support this claim. A legal entity is considered one that can sue or be sued in the name given in the application. See sections II.5.2.4. and II.5.2.8. of this manual.
II.5.2.3 Partnerships
While the office will not register a trade-mark in the name of more than one individual or entity, applications to register 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. It may occasionally happen that two or more persons apply to register a trade-mark, but do not provide a trading name. The examiners will require confirmation of an existing partnership and will ask that the trading name be given.
In the past, whenever an application was filed in the name of a partnership, or if an assignment was submitted in favour of a partnership, it was necessary to identify each general partner. However, this is no longer the practice, and 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.
II.5.2.4 Associations
Associations which are legal entities (i.e., lawful associations) may acquire trade-mark rights either in association with services performed for members or for wares 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, and the laws under which the association was organized (e.g., the laws of Ontario) should be described. However, the examiners will only require the latter when the applicant has neglected to use "Incorporated" or "Limited" or some other method of identifying the association as a legal entity. See sections II.5.2.2. and II.5.2.8. of this manual.
II.5.2.5 Joint Ventures
Applications to register a mark may also be made by two or more applicants who are engaged jointly in commercial activities which result in the production of wares or the provision of a service, e.g., a joint venture, which is yet 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.
Furthermore, 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 trade-mark may be assigned or ownership resolved if the 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.