Trade-Marks Examination Manual (page 10 of 55)

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II.7 Contents of Specific Applications

II.7.1 Applications Based on Use in Canada — Subsection 16(1) and Paragraph 30(b), Form 1

Under the provisions of paragraph 30(b) an applicant may submit an application to register his/her trade-mark if it has been used in Canada in association with the wares or services specified and as long as the applicant can provide a date of first use.

Note: Pursuant to Rule 32(c), after advertisement, an applicant will not be permitted to change the application from one alleging use or making known to one for a proposed trade-mark.

II.7.1.1 Type of Mark

Trade-marks are used for the purpose of distinguishing the wares or services of one person from the wares or services of others and may comprise words or designs or a combination of words and designs. A word mark describes any trade-mark made up of words, letters, numerals or a combination thereof, presented in ordinary block letters on the application form. Design marks, on the other hand, are not made up of a word or words only and may include representations of objects, or figures or combinations of objects and/or figures or combinations of objects and/or figures and words, numerals or letters in special form, colour or arrangement. See sections II.5.1 and II.6.2 of this manual.

II.7.1.2 Naming Date of First Use

It is not acceptable for the applicant to use an expression such as "on or about" a certain date to identify dates of first use, since this is not precise enough. The reason for requesting exact dates is very obvious in situations in which two or more trade-marks which are the subject of applications based on use or making known in Canada are found to be confusing, thus necessitating a determination as to the person entitled to registration. See subsection 16(1).

The following prepositions or prepositional phrases are acceptable when used in association with dates: "since," "since before," "since at least," "since as early as," and "since at least as early as."

When naming a date of first use, it is in the applicant's own interest to be as specific as possible, e.g., naming the day of the month, as well as the year. The following sets out the minimum date particulars required according to the time of filing:

Filed in current month

name the day, month and year

Filed in current year, but not current month

name the month and year

Filed in any year prior to current year

name the year only

When only the month and year are named, the last day of the month will be regarded as the effective date for the purpose of determining entitlement in cases of confusion. When only the year is named, December 31^st of that year will be the determining date.

Note: Drawings and Specimens

See sections II.6.2. and II.6.3. of this manual for guidelines on submitting drawings and specimens.

II.7.2 Applications Based on Making Known in Canada — Subsection 16(1) and Paragraph 30(c), Form 2

A Form 2 application will be submitted when the applicant has not used a trade-mark in Canada but has made a trade-mark well known in Canada (see section 5) in relation to wares or services by using the trade-mark in association with the wares or services in a Union Country, and by distributing or advertising the mark in association with the wares or services in Canada.

One cannot base a claim on "made known" if one is also claiming "use" for the same wares/services on identical dates. However, these two claims will be accepted if they are for different wares/services or if the "made known" claim precedes that of the "use" claim for the same wares/services. An application which contains a "made known" claim and a "proposed use" claim for the same wares/services is acceptable.

A change in the basis of an application from "made known" to "use" in Canada is not acceptable notwithstanding that each claim is treated equivalently in determining entitlement under subsection 16(1). Section 5 of the Trade-marks Act states that:

"A trade-mark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with wares or services"[emphasis ours]

Furthermore, paragraph 30(c) of the same Act reads:

"…in the case of a trade-mark that has not been used in Canada, but is made known in Canada, the name of a country of the Union in which it has been used by the applicant or his named predecessors in title, if any, and…" [emphasis ours]

Section 5 and paragraph 30(c) illustrate the critical differences between the two bases: one alleges use in Canada and the other does not. This distinction would therefore not allow for the interchange of a "made known" claim to a "use" claim unless the date of first use is subsequent to the date of making known.

II.7.2.1 Manner of Making Known in Canada — Section 5

Apart from stating that the mark has been used in a particular Union Country other than Canada in association with the wares or services, the applicant must be specific about the manner of making the mark known in Canada. One or more of the following statements may be made:

The trade-mark has been made known in Canada by reason of the distribution of the wares in association with the trade-mark in Canada.
The trade-mark has been made known in Canada by reason of the advertising of the wares or services in association with the trade-mark in printed publications circulated in Canada in the ordinary course of trade among potential dealers in or users of such wares or services.
The trade-mark has been made known in Canada by reason of the advertising of the wares or services in association with the trade-mark in radio or television broadcasts ordinarily received in Canada by potential dealers in or users of such wares or services.

II.7.2.2 Naming Date of Making Known

The application must also include a statement about the date of making known, and the applicant must be precise in the manner outlined in section II.7.1.2 for applications based on "Use in Canada."