Trade-Marks Examination Manual (page 23 of 55)
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IV The Examination of the Mark
IV.1 Purpose of Examination
A formal review of the application serves initially to establish its compliance with the requirements of section 30 of the Trade-marks Act. However, the study of the application also allows the examiners to assess the character of the trade-mark, to become familiar with the wares or services associated with it, and to understand the nature of the business involved. Using this knowledge, the examiners are then well prepared to undertake an examination of the mark itself and to determine its registrability. For while an applicant can use a mark in association with wares or services for purposes of identification in the marketplace and call it a trade-mark, it is not necessarily registrable. Upon receiving the application, the examiners will carefully scrutinize its subject matter giving particular consideration to the following:
- Is the subject matter a trade-mark pursuant to section 2?
- Is the subject matter a distinguishing guise pursuant to section 13?
- If the subject matter is a trade-mark, is it registrable pursuant to paragraphs 12(1)(a), (b), (c), (d), (e), (f), (g) or (h) or sections 9 or 10 of the Trade-marks Act?
or
- If the trade-mark is not registrable pursuant to paragraph 12(1)(a) or (b) of the Trademarks Act, is it registrable on proof of acquired distinctiveness or secondary meaning pursuant to subsection 12(2), or on proof that the mark applied for is not without distinctive character in Canada pursuant to section 14?
IV.2 Definition of Trade-mark
According to section 2 of the Trade-marks Act, a trade-mark is:
- a mark which is used for the purpose of distinguishing, or so as to distinguish, the wares or services of one person from those of others (ordinary mark);
- a certification mark;
- a distinguishing guise; or
- a proposed trade-mark.
All trade-marks are defined in terms of subject matter and purpose. The subject matter is "a mark." The purpose is defined in the same manner for an ordinary trade-mark, a distinguishing guise and a proposed mark and in a different manner for certification marks. See relevant sections in this manual.
Although the word "mark" has not been specifically defined in the Trade-marks Act, it has been interpreted as being co-extensive with the word "symbol" as it appeared in the Unfair Competition Act and as co-extensive with the list of subject matter under the Trade Marks and Design Act. The exception is that the shaping of wares or their containers or a mode of wrapping or packaging wares has been separately defined as a distinguishing guise.
The subject matter protectable under the Trade Marks and Design Act was: "all marks, names, labels, brands, packages, or other business devices," used to distinguish the wares of any person. At present, a mark which is primarily functional or which has a characteristic appearance resulting from the process of manufacture or which consists of ornamentation applied to wares for the purpose of enhancing the appearance of the wares is not necessarily proper subject matter for a registrable trade-mark.
IV.2.1 Colour
An applicant may claim colour as a feature of the trade-mark. Unless restricted to a particular colour, registration confers on the registered owner the exclusive right to use the mark in any colour. See Smith v. Fair (1887), 14 O.R. 729 and Tavener Rutledge Ltd. v. Specters Ltd. [1959] R.P.C. 355.
If, on application, colour is claimed as a feature of the trade-mark, the colour of the mark or of its elements must be described in the application.
Colour alone will not render a trade-mark registrable. However, the Office now accepts marks which consist of a specific colour as applied to a particular shape and size of a product in view of the Federal Court of Canada decision Smith, Kline & French Canada Ltd. v. Registrar of Trade Marks (1987), (Unreported - T - 567 - 84). In that case, Strayer J. concluded that the trade-mark did not "reside in colour alone." The judge noted that, "the trade mark whose registration as sought is a particular colour of green applied to a particular size and shape of tablet."
In cases such as these, the examiners will request a dotted outline drawing showing a three-dimensional perspective of the mark to comply with paragraph 30(h). (The drawing may be lined in accordance with the colour chart in Rule 28(2) of the Regulations.) Also, if a specimen is to form part of the description of the mark, the specimen should be specifically referenced therein. See Novopharm Ltd. v. Burroughs Wellcome Inc. (1993), 52 C.P.R. (3d) 263. This opposition decision was subsequently upheld in the Federal Court Trial Division in Burroughs Wellcome Inc. v. Novopharm Ltd. (1994), 58 C.P.R. (3d) 513
The applicant should include a paragraph relating to the colour claim, together with a clear description as to what the trade-mark consists of, as well as a statement that the representation of the wares shown in the dotted outline does not form part of the trade-mark.
Colour applied to one strand in a wire rope has been held to be a registrable trademark. See Wrights' Ropes Ltd. v. Broderick & Bascom Rope Co. [1931] Ex. C.R. 143. Furthermore, colour in the form of lines woven into the edge of cloth is registrable as a trade-mark. See F. Reddaway & Co. Ld's Application (1914), 31 R.P.C. 147.
The representation of a plaid, however, for use in association with cloth is not a mark. Since plaid consists of combinations of coloured threads woven in a precise pattern to create the wares, the coloured pattern is the wares and therefore cannot be a trademark applied to the wares.
IV.2.2 Functionality
Where the subject matter of an application is primarily functional, it cannot be protected as a trade-mark.
A combination of a clear cigarette package wrapper and a red coloured band, which were deemed functional, were ruled not fit subject matter of a trade-mark in Imperial Tobacco Co. of Canada, Ltd. v. Registrar of Trade Marks [1939] Ex. C.R. 141. At p. 145, Maclean J. stated:
In my opinion any combination of elements which are primarily designed to perform a function, here, a transparent wrapper which is moisture proof and a band to open the wrapper, is not fit subject matter for a trade mark, and if permitted would lead to grave abuses.
The function, in this case, dictated the design, hence such a design was not registrable as a trade-mark. This is not regarded, however, as the only criterion upon which a mark would be rejected for being primarily functional. For example, public perception is seen as being important regarding the particular design involved.
In Parke, Davis & Co., Ltd. v. Empire Laboratories Ltd. (1963), 41 C.P.R. 121, Noel J. found that the registration of 10 different colours applied to pharmaceutical capsules constituted a monopoly and that the band sealing the two portions of the capsule performed a function. By contrast, in IVG Rubber Canada Ltd. v. Goodall Rubber Co. (1980), 48 C.P.R. (2d) 268, Dubé J. found that the helical stripe on the Goodall hose does not have the same type of functional use as the band on the Parke, Davis capsule. He found that, unlike the gelatine band which fulfils the essential physical function of holding the capsule together, the spiral stripe running along the Goodall hose is not physically essential to the hose, but that it merely distinguishes it from other wares.
Also, if the subject of the application contains certain markings arising from the process of manufacture, it is not proper subject matter for an application. See Elgin Handles Ltd. v. Welland Vale Manufacturing Co. Ltd. (1964), 43 C.P.R. 20.
If the design applied to the wares has a primarily functional or ornamental use, the application should be refused. In W.J. Hughes & Sons "Corn Flower" Ltd. v. Morawiec (1970), 62 C.P.R. 21, Gibson J. considered the validity of a trade-mark consisting of the fanciful representation of a cornflower, the design of which was cut on glass blanks, which then became cut glass. The design was described as follows:
The conventional representation of a flower having twelve petals and a compound pistil illustrated by intersecting lines, said flower being supported on a stem or stalk having a plurality of narrow pointed leaves.
In finding the registration invalid, Gibson J. stated at pp. 34-35:
But there could have been no valid registration of this pattern or design to be applied on glassware for ornamentation or functional use only. If the intention to do this latter only had been conveyed to the Registrar at the time of the application in 1951, he probably would have refused the registration.
The attack in this case is that the intention the plaintiff had when applying for registration of this pattern or design in 1951 was for the purpose of enabling it to use the registration of this pattern or design for cut glass tableware for ornamentation purposes only in fact, but the plaintiff did not convey such intention to the Registrar of Trade Marks. Instead the intention the plaintiff conveyed to the Registrar at the time was that this pattern or design was to be used by it for trade mark purposes.
In Adidas (Canada) Ltd. v. Colins Inc. (1978), 38 C.P.R. (2d) 145, Walsh J. considered the validity of a mark depicting a person wearing a training suit. The mark was described as follows: "The design consists of three parallel stripes applied to the outside of the sleeves and of the legs of the training suit in a longitudinal direction." The wares were described as training suits. Two other similar marks for sportswear were also considered. At p. 169, Walsh J. stated:
Moreover aside from the question of distinctiveness there is a very serious question as to whether the three stripes do not constitute a functional design, serving the function of decoration and are not properly registrable as a trade mark.
There is some evidence to the effect that striping on the sleeves or legs of garments, and athletic garments in particular, adds to their attractiveness for a potential buyer. Longitudinally placed stripes have a slenderizing effect and may perhaps give an illusion of speed or motion. Certainly I believe that it is fair to say that a garment bearing some such decorative stripes is more attractive and has more eye appeal than a plain garment. This has been recognized by manufacturers for many years and no doubt accounts for the great variety of striping which is so used".
At p. 170, Walsh J. approved the statements of the Registrar refusing to register three parallel stripes applied for in relation to various types of sports clothing. At pp. 154-155, Walsh J. stated:
These were all objected to by the Registrar for the same reasons, namely, that they were intended to be used primarily for ornamentation rather than as trade marks properly speaking, and that ornamentation is protected by the Industrial Design Act, R.S.C. 1970, c. I-8, only for five years subject to renewal for a further five years, and that the Trade Marks Act, must be strictly interpreted so as to not grant rights for ornamentation of wares for a longer period. It was further stated that it is not the intention of the applicant which is the determining factor but the effect that the particular ornamentation or dress applied to the representations of the wares produces upon the public mind. It was conceded that ornamentation not normally used as a trade mark may by reason of extensive use acquire a distinctiveness and thus in time become a distinguishing guise capable of being registered as a trade mark, but must first as a result of extensive use be perceived or understood by the public to be performing the function of distinguishing the goods of the applicant from those of others.
In Remington Rand Corp. v. Philips Electronic N.V. (1993), 51 C.P.R. (3d) 392, McGillis J. was faced with an action for expungement of four trade-marks held by Philips. Two of the marks were two-dimensional representations of a triple-headed rotary shaver head assembly and the other two were distinguishing guises. McGillis was of the opinion that the applicant for the expungement action had failed to establish a factual basis to support the contention that utilitarian functionality dictated the design of the triple-headed shaver. Therefore, the action to expunge the four trade-mark registrations was dismissed.
The Decision of McGillis J. was, however, reversed by the Federal Court of Appeal (1995), 64 C.P.R. (3d) 467, which ordered Phillips' registrations expunged. Only two of the original four registrations were at issue in the appeal decision - one design mark and one distinguishing guise. After a thorough review of the jurisprudence, MacGuigan J. A. concluded at p. 475 of the decision:
…what is determinative is the kind of functionality in question. If functionality goes either to the trade mark itself (Imperial Tobacco, and Parke Davis) or to the wares (Elgin Handles), then it is essentially or primarily inconsistent with registration. However, if it is merely secondary or peripheral, like a telephone number with no essential connection to the wares, then it does not act as a bar to registration.
The Court of Appeal went on to hold that both the design mark and the distinguishing guise in question were primarily functional and therefore not registrable. The Federal Court of Appeal appears to have been influenced by the fact that registration of a primarily functional trade-mark is a restraint on manufacturing and trade, since it effectively amounts to a patent or industrial design in the guise of a trade-mark.
In the event that the mark applied for is not objectionable as being primarily functional or ornamental, then the depiction of the wares showing particular shapes or markings or the shaping of the containers of the wares should be examined as a distinguishing guise, pursuant to section 13. See also "Distinguishing Guise" in section IV.2.6 of this manual.