Trade-Marks Examination Manual (page 6 of 55)

This manual also available as PDF
Trade-Marks Examination Manual (PDF - 1 MB - 247 pages)

II.5.2.6 Corporations

The instructions for completion of an application do not require that the jurisdiction under whose laws the applicant was incorporated be named. If a corporate seal is affixed to the application, the examiners should check to ensure that the name on the seal matches that given in the application. Furthermore, if the date of incorporation (e.g., 1994) on the seal is subsequent to a claimed date of first use (e.g., Feb. 16, 1993), the applicant should be questioned as to whether a predecessor used the mark since Feb. 16, 1993. The application must, however, contain the full name of the corporation, which may be a private organization, or a public authority such as a municipal or provincial corporation, or a provincial or federal statutory body.

Corporate applicants must apply in the corporate or company name only. A common error is a person filing an application on behalf of a corporation and identifying him/herself either solely or in addition to the corporation or company which he/she represents. In the following examples, all information preceding XYZ Co. Ltd. is considered superfluous and should not be included when identifying the applicant:

Jack Jones, President of XYZ Co. Ltd.
Jack Jones on behalf of XYZ Co. Ltd.
Jack Jones attorney of XYZ Co. Ltd.

Occasionally, an applicant who intends to form a corporate body will apply for registration of a trade-mark which is in use or which is intended for use, and will request that the registration be made in the name of the intended corporate body. Although an as-yet-uncreated business entity cannot be the applicant, the individual may make application to register the mark and may subsequently assign ownership to the corporate body when it is incorporated.

The designation "Co." or "Company" (e.g., Fizz Company or HappyTraders Co.) does not necessarily denote a corporation in a Canadian jurisdiction, and, consequently, confirmation as to whether the applicant is a legal entity should be requested if the applicant is domiciled in Canada. The designation "Co." or "Company" is indicative of incorporated status in the United States and therefore an American entity so identified (with Co. or Company) should not be questioned.

Where a division or component of a corporation is engaged in commercial activity associated with use of a trade-mark, the examiners will accept, as a proper indication of use by a division, the following:

General Furniture Ltd., operating through its division Bowes Furniture Manufacturing Co.

General Furniture Ltd., sometimes doing business as Bowes Furniture Manufacturing Co.

Bowes Furniture Manufacturing Co., a division of General Furniture Ltd.

II.5.2.7 Use of French or English Form of Corporate Name

Subsection 10(3) of the Canada Business Corporations Act states:

Subject to subsection 12(1), a corporation may set out its name in its articles in an English form, a French form, an English form and a French form or in a combined English and French form and it may use and may be legally designated by any such form.

Therefore an applicant whose name incorporates both a French and English version, e.g., Tourbières Lambert Inc./Lambert Peat Moss Inc., will be recognized as the same entity whether identified only as Tourbières Lambert Inc. or Lambert Peat Moss Inc.

II.5.2.8 Legal Entities

A legal entity is one with sufficient existence in legal contemplation that it can function legally, sue or be sued and make decisions through agents, as in the case of corporations. The applicant for registration of a trade-mark must be a legal entity. See sections II.5.2.2 and II.5.2.4 of this manual.

In some instances, the application will show a trading style which in itself appears to be a legal entity, e.g., ABC Co. Ltd. trading as XYZ Limited. The office considers that the trading style may or may not be a legal entity, the prime consideration being that the owner (ABC Co. Ltd. in the example) is a legal entity.

All confusing marks showing ABC Co. Ltd. in the company name as owner will be associated, whether or not the company trades under another name, e.g., ABC Co. Ltd. doing business as XYZ Limited or ABC Co. Ltd. trading as MNO Co. Limited. See section III.7.2 of this manual.

II.5.2.9 Foreign Legal Entities

The following list shows designations accepted as being indicative of a legal entity. The examiners should therefore not query this point if an applicant's name incorporates any of the following denotations:

AB - Sweden
Aktiebolag - Sweden
Aktiengesellschaft - Germany
A/S - Denmark
B.V. - Netherlands
de C.V. - Mexico
G.M.B.H. - Germany
Kabushiki Kaisha - Japan
K.G. - Germany
N.V. - Netherlands
Oy - Finland
P.L.C. - United Kingdom
Public Limited Company - United Kingdom
S.A. - France
S.A.R.L. - France
Societa Per Azione - Italy
Société Anonyme - France
Société à Responsabilité Limitée - France
S.P.A. - Italy

II.5.2.10 Wrong Identification of Applicant

Often an application to register a trade-mark is filed in the wrong name and the agent (or applicant) attempts to remedy the error. There are many variations to the incorrect identification of an applicant, and the following examples typify those most often encountered. Office practice with regard to rectifying these errors is reflected accordingly.

The application shows "Incorporated" instead of "Limited," or vice versa; "Company Limited" instead of "Company Inc.," or vice versa; "Company of Canada Ltd." instead of "Company Ltd.," or vice versa, and so on. This is considered to be a minor variation. An affidavit from the applicant to the effect that the erroneous entity did not exist at the date of filing will be required together with the details of the filing error. If this is in order, the Office will accept the variation, which should be contained in a revised application.
The application is filed in the old name of the applicant when a change of name occurred prior to the date of filing the application. The Office will accept this change with the submission of an affidavit setting out the details of the filing error and a revised application showing the correct name of the applicant. This situation is not contrary to Rule 31(a) as the actual "identity" of the applicant has not changed. (Of course, if the change of name occurs after the filing, a change of name document should be filed in the normal manner.)
The agent (or applicant) advises that an assignment took place prior to the filing of the application; however, the application was filed in the old name. The Office will not accept an affidavit attesting to the circumstances surrounding the error as the applicant was not the owner at the date of filing. This situation is contrary to Rule 31(a). The application must be refiled in the name of the current owner.
The applicant is a United States company and is shown as a state corporation — for example, an Illinois corporation — but the Office is advised that this should have been shown as a Delaware corporation. If there never was an Illinois corporation (i.e., this jurisdiction never existed) then the Office will require an affidavit setting out the details of the error before accepting the amendment to show the applicant as a Delaware corporation.
If both jurisdictions (Illinois and Delaware) existed at the time and the applicant filed the application naming the wrong one, then nothing can be done to correct the error as this would change the identity of the applicant, thereby contravening Rule 31(a). The application must be refiled in the name of the correct owner.
When an application is filed in the name of a non-legal entity, e.g., Farm Foods, no affidavit is required to correct the applicant's name to a legal entity, e.g., Mary Smith trading as Farm Foods. Other corrections to the applicant's name may require an affidavit.

Previous | Table of Contents | Next