Trade-Marks Examination Manual (page 36 of 55)
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IV.7 Paragraph 12(1)(d) — Confusion
See Chapter III, "The Search/Confusion," for a discussion of the issue of confusion in light of the provisions of paragraph 12(1)(d) and section 16 of the Act.
IV.8 Paragraph 12(1)(e) — Prohibited Marks
Marks which may not be used or registered as trade-marks are set down in subsection 9(1) and section 10 of the Act. The examiners must remember that the prohibition against registration applies both to exact reproductions of the marks, crests, emblems, etc. and to marks so nearly resembling them as to be likely to be mistaken for them.
The following commentaries deal with the various subsections of sections 9 and 10.
IV.8.1 Paragraphs 9(1)(a), (b) and (c)
A mark is not registrable if it consists of, or so nearly resembles as to be likely to be mistaken for, any of the subject matter named in paragraphs 9(1)(a), (b) or (c). But, although the Act prohibits marks that reproduce or resemble the Royal Arms, Crest or Standard, etc., no objection will normally be raised in respect of the words "royal" or "vice regal," etc., or to the use of titles such as "Royal Prince" or "Her Majesty," etc. See, for example, B. Houde Company Limited v. Commissioner of Patents [1934] Ex. C.R. 149, in which the word "Royal," as part of a composite mark, was held not to contravene section 14 of the Unfair Competition Act, corresponding to paragraphs 9(1)(a) and (b) of the Trade-marks Act. See also the following commentary on paragraph 9(1)(d).
IV.8.2 Paragraph 9(1)(d)
An objection to registration will be raised in respect of any mark which suggests an association with a royal, vice-regal or governmental authority as set out in paragraph 9(1)(d). Note that a word which alludes in a general way to royalty or a crown, etc. is registrable material — see Nehi Inc. v. Registrar of Trade Marks [1939] Ex C.R. 217, Royal Crownwere held not to be prohibited by section 14 of the Unfair Competition Act. However, a mark in which such a word is used in a manner to indicate royal patronage must be objected to pursuant to paragraph 9(1)(d).
In T.S. Simms & Co. Ltd. v. Commissioner of Patents [1938] Ex. C.R. 326, in which a representation of a crown closely resembling the royal crown included in the Royal Crest was refused registration, the learned trial judge, Angers J. stated:
I do not believe that section 14 forbids the use of a crown in general; in my opinion, however, it does forbid the use of the crown forming part of the Royal Arms or crest or of the arms or crest of a member of the Royal Family or of a crown so nearly resembling them that it may lead to mistake.
See also A.B. Statens Skogsindustrier v. Registrar of Trade Marks (1964), 46 C.P.R. 96, in which the mark Royal Board Three Crowns with a design was held not to offend paragraph 9(1)(d) of the Trade-marks Act.
In Canada Post Corp. v. MacLean Hunter Ltd.(1994), 55 C.P.R. (3d) 559, the applicant applied to register the trade-mark Laser Post based on use for personalized direct-mail services and personalized direct-mail wares. The words Laser and Post were disclaimed.
The opponent alleged that the trade-mark was not registrable pursuant to paragraphs 9(1)(d) and 12(1)(e) of the Trade-marks Act because it was likely to lead to the belief that the wares and services in association with which it was used had received or were produced, sold or performed under governmental patronage, approval or authority.
The application was refused because it was concluded that there was a significant association in the public mind between the word "post" and the opponent when it is used for mail-related wares and services. Further, Laser Post customers would assume that Canada Post had approved, authorized, sponsored or licensed the applicant's use of the trade-mark Laser Post.