Trade-Marks Examination Manual (page 24 of 55)
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IV.2.3 Representation of the Wares (full-line drawing)
Sometimes, applications are filed for trade-marks which are depictions of the wares in full-line drawing showing particular shapes, decorations or ornamentations applied to the wares or to containers. Such applications have been filed for a wide variety of wares, including athletic shoes, dish cloths, swimsuits, briefcases, cut glass, and so on.
Office practice does not allow for full-line drawings of the wares or containers as trade-marks unless the application is for a distinguishing guise.
If the application clearly states that the representation of the wares or the container does not form part of the mark, then the applicant will be permitted to change the drawing to dotted outline format. Once the amendment is made, the application will be examined as an ordinary trade-mark. An application originally submitted lacking such a statement or any other information to indicate that the applicant did not intend to file for a distinguishing guise, will be treated as an application for registration of a distinguishing guise. This guidance as to form does not preclude the Office from determining that a mark is primarily functional or ornamental in nature.
IV.2.4 Representation of the Wares (broken-line drawing)
Trade-mark registrations should be as clear as possible as to exactly what is being protected. Applications must include a drawing in dotted outline and statements which help to clarify the actual trade-mark being applied for. Such an application must also state that the representation of the wares or containers does not form part of the mark. If missing from the application, these elements will be requested in a revised application.
This guidance as to form does not preclude the Office from determining that a mark is primarily functional or ornamental in nature.
IV.2.5 Packages (unfolded)
From time to time, registration is sought for a box design with the box being shown in the drawing in its unfolded or knocked-down form and in which all four, or more, side panels and the ends may be viewed at once. This is acceptable provided that the unfolded or knocked-down form is shown in dotted outline and the application contains the statement that the representation of the unfolded container does not form part of the mark, as well as a statement which helps to clarify the actual trade-mark applied for.
IV.2.6 Distinguishing Guise
The definition of a distinguishing guise, as opposed to that of a trade-mark, refers directly to the wares themselves or their containers or packaging as being the mark. Applications which show a representation of the wares, containers or packaging as part of the mark must therefore be examined as a distinguishing guise. See also section II.7.6 of this manual.
If the representation of the wares or containers is not part of the mark, it should not be shown or, if shown, it should be in dotted outline only. The application must also include a statement that the representation of the wares or container is not part of the mark and a statement as to what the mark consists of.
All other applications showing a representation of the wares, containers or packages in full outline will be examined as a distinguishing guise. In this assessment, the public perception as to whether the design applied for serves to indicate the source of origin, or whether it is primarily functional or ornamental, is important.
For example, three parallel stripes on a jogging suit have aspects other than identifying a source of origin. The striping makes the garment attractive to potential buyers by giving the illusion of speed and, in the case of longitudinally placed stripes, by having a slenderizing effect. The public has been conditioned to perceive these stripes as merely decorative, adding eye appeal to the garment.
As pointed out by Walsh J. in Adidas (Canada) Ltd. v. Colins Inc. (1978), 38 C.P.R. (2d) 145, at p. 155:
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.
See also section IV.2.2 of this manual on functionality.
IV.2.7 Slogan
Occasionally, an applicant will seek to register a slogan as a trade-mark. The limitations previously found in the Unfair Competition Act which provided that a word mark was not registrable if it contained more than 30 letters and/or numerals divided into more than four groups are not found in the Trade-marks Act. Currently, the registrability of a slogan is judged, as with subject matter presented in any form, pursuant to the provisions of section 12 of the Act.
IV.2.8 Letters and Initials
Letters and initials are acceptable as subject matter for a trade-mark or part of a composite mark provided that they are not the name or abbreviation of the name of the wares or that they are not otherwise unregistrable.
For example, NO. 1 is a mark, but is not a registrable trade-mark, being clearly descriptive of the character or quality of the wares. See John Labatt Ltd. v. Carling Breweries Ltd. (1974), 18 C.P.R. (2d) 15. Mere letters are building blocks of written communication and, as such, are given a very narrow scope of protection when used as trade-marks. See GSW Ltd. v. Great West Steel Industries Ltd. (1975), 22 C.P.R. (2d) 154.
With respect to letters and initials, the ambit of protection accorded to such marks can be enhanced by incorporating the letters in a design, bearing in mind that it is the reaction of the public to the totality of the design which determines the distinctiveness of the trade-mark. See Cochrane-Dunlop Hardware Ltd. v. Capital Diversified Ltd. (1976), 30 C.P.R. (2d) 176 at p. 183, where Blair J. stated:
…the result might have been different had the mark consisted not only of letters of the alphabet but also design features giving it greater distinctiveness. An example of such distinctiveness added to mere letters of the alphabet is provided by Building Products Ltd. v. B.P. Canada Ltd. (1961), 36 C.P.R. 121, 21 Fox Pat. C. 130, per Cameron J., at p. 143.
See also section IV.6.3 of this manual.
IV.2.9 Numerals
Applications in which numerals appear as subject matter for protection should be accepted unless it is apparent from material filed by the applicant that the numbers are used merely to number parts of equipment sold in association with a trade-mark. See Decatur v. Flexible Shaft Company Limited [1930] Ex. C.R. 97. Nevertheless, numerals, like initials and letters, are marks of low inherent distinctiveness and should be given a narrow scope of protection. See also section IV.6.3 of this manual.
Fox, in his Canadian Law of Trade Marks and Unfair Competition, Third Edition, argues against the acceptability of numerals as subject matter, pointing out at page 80 that the inherent danger in marks consisting only of numerals lies in their being used, more often than not, merely as grade or quality marks, and not as trade-marks as defined in section 2 of the Act. Such numerals are barred from prima facie registrability under paragraph 12(1)(b) as being clearly descriptive of the character or quality of the wares. However, some marks composed of numerals may be properly registered as trade-marks. See Pizza Pizza Ltd. v. Registrar of Trade Marks (1989), 26 C.P.R. (3d) 355, where a Federal Court Trial decision upholding the Registrar's refusal of the mark "967-1111" was overturned.