Trade-Marks Examination Manual (page 14 of 55)

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II.7.8 Claim to the Benefit of Section 14

II.7.8.1 Comparison of Subsection 12(2) and Section 14

Trade-marks which are not registrable because they are names or surnames within the definition set out in paragraph 12(1)(a), or which are clearly descriptive according to paragraph 12(1)(b), may be registered pursuant to section 14. In order to claim the benefit of section 14, the applicant must show that the trade-mark has been registered in or for the country of origin of the applicant or his/her predecessor in association with the same wares or services and must furnish a certified copy of the corresponding registration and any other evidence required by the Registrar. A section 14 claim need not be entered at the time of filing the application. See subsections 31(1) and 31(2).

Section 14 of the Trade-marks Act differs substantially from paragraph

  1. only if the trade-mark is not without distinctive character in Canada; and
  2. only after the Trade-marks Office has taken into account all the circumstances of the case, including the length of time during which such trade-mark has been used in any country.

The word "distinctive" in the expression "not without distinctive character," should be given the meaning ascribed to it in section 2 of the Act. The person who is entitled to rely on section 14 is given some advantage over a person who must rely on subsection 12(2) of the Act in that while both persons must satisfy the Registrar as to the distinctive character of their trade-marks, the burden of adducing evidence is lighter in the case of the person relying on section 14.

For example, in order to prove acquired distinctiveness of a mark pursuant to subsection 12(2), the applicant must show that it has acquired a secondary meaning throughout Canada, unless the applicant is prepared to accept territorial limitations. The applicant who invokes section 14 however, has only to show that the mark is not without distinctive character in Canada by virtue of the manner and extent to which it has been used or advertised. It need not be shown that such distinctiveness existed as of the date of filing of the application. Territorial limitations are not applicable.

Section 14 evidence will be questioned if it shows that use or making known of the trade-mark has been by a person other than the applicant. The evidence will be acceptable if it shows use or making known by the applicant or, under certain conditions, by a licensee. See subsection 50(1). In those cases of substantial spill-over advertising into Canada, proof of actual use in Canada may not be a prerequisite.

II.7.8.2 Data Required on Affidavits

The affidavit or statutory declaration in support of a claim to registration based on section 14 of the Trade-marks Act should contain the following information:

  1. the status of the declarant, i.e., president, manager, secretary, and so on;
  2. particulars of the applicant company, i.e., when and how it was founded, and where it carries on business;
  3. the wares or services in association with which the mark is used — the list should be detailed — and the date of first use anywhere in the world;
  4. the date as of which the wares have been sold under the trade-mark in Canada (If there has been no use of the trade-mark in Canada, the Office expects proof of substantial spill-over advertising into Canada.);
  5. a list of the countries in which the trade-mark is used in association with the same wares and/or services;
  6. a list of the countries in which the trade-mark has been registered;
  7. the approximate total volume and value of the wares and/or services sold or performed in Canada in association with the trade-mark, and the approximate total value of such wares and/or services sold in other countries;
  8. the total volume and value of advertising of the trade-mark in Canada and in other countries;
  9. sample advertisements, labels, etc., as used in Canada and elsewhere, mounted, where possible, on paper which will fit on the application file.

II.7.8.3 Further Notes on Section 14

  1. The trade-mark which the applicant seeks to register in Canada may differ from the trade-mark registered abroad in respects which do not affect its identity or alter its distinctive character. See subsection 14(2). In practice, only minimal differences are permitted.
  2. The wares and/or services associated with the trade-mark in the Canadian application may not extend beyond those covered by the foreign registration. For example, a registration in or for a Union country extending to electric kettles, would not support a registration in Canada extending to small electrical appliances, namely, kettles, toasters, knives, mixers.
  3. A claim to the benefits of section 14 may not be invoked to overcome a disclaimer requirement pertaining to unregistrable portions of a composite mark. For example, a trade-mark which contains an element or elements which contravene the provisions of paragraphs 12(1)(a) or (b), such as Levesque's Hotspot would not be registrable without a disclaimer of Levesque's, unless this unregistrable portion of the trade-mark had become distinctive in Canada, pursuant to subsection 12(2), or had been shown to be not without distinctive character in Canada, pursuant to section 14, as evidenced by one or more registrations in Canada relating solely to the unregistrable matter. Evidence may not be submitted for elements of marks, only to marks as a whole.

    If the registration relied upon does not include all of the same or similar classes of wares and/or services applied for in the Canadian application, a disclaimer statement extending to the unregistrable portion(s) of the trade-mark in association with the wares/services not covered will be required.

  4. If the Registrar is not satisfied that evidence furnished pursuant to subsection 31(2) establishes that the trade-mark is "not without distinctive character in Canada," further evidence may be required. Such evidence may be in the form of affidavits from independent persons in Canada attesting that they recognize the trade-mark as indicating the applicant's wares or services. However, the applicant might succeed in establishing the claim by providing evidence of more advertising of the trade-mark in Canada than was given in the original affidavit.
  5. All affidavits pursuant to subsection 31(2) should be accompanied by specimens of advertisements and exhibits showing the manner of use of the trade-mark.
  6. An applicant who wishes to claim the benefits of section 14 and whose statement of use of the mark in Canada is extended to cover additional wares or services, may, if there has been extensive use of these, rely on the provisions of subsection 12(2) and section 32 to establish acquired distinctiveness in association with those additional wares or services.

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