Trade-Marks Examination Manual (page 38 of 55)
IV.8.5 Paragraphs 9(1)(i) and 9(1)(i.1)
Under Article 6ter of the Paris Convention, the Registrar may receive a communication from the International Bureau of the World Intellectual Property Organization advising of a request for protection in respect of a territorial or civic flag; a national, territorial or civic arm, crest or emblem; or an official sign or
Public notice of the communication from the International Bureau is given by way of advertisement in the Trade-marks Journal. Matter to be protected under this section is not indexed in the subject indexes in the usual manner. The specimens, which are true representations of the territorial or civic flag; national, territorial or civic arm, crest or emblem; official sign or hallmark indicating control or warranty, are placed in numbered folders. These prohibited marks were previously filed alphabetically in a subject index of the elements comprising the matter to be protected. In 1981, this subject index was discontinued and replaced with black binders. Therefore, this information now appears in the indexes (up to 1981), and subsequently in black binders.
IV.8.5.1 Paragraph 9(1)(i.2)
The prohibition against adoption for use as a trade-mark of any national flag of a country of the Union does not, as in the case of paragraphs 9(1)(i) and 9(1)(i.1) require a communication from the International Bureau and public notice by the Registrar. However, if a communication is received from the International Bureau in respect of a national flag, it will be treated in the same way as communications referred to above under the heading "Paragraphs 9(1)(i) and 9(1)(i.1)"
IV.8.5.2 Paragraph 9(1)(i.3)
Under Article 6ter of the Paris Convention, the Registrar may receive a communication from the International Bureau of the World Intellectual Property Organization advising of a request for protection in respect of an armorial bearing, flag or other emblem, or an abbreviation of the name of an inter-governmentalorganization.
Public notice is given by way of advertisement in the Trade-marks Journal. The requests are then placed in numbered folders and the information is recorded in the black binders.
IV.8.6 Paragraph 9(1)(j)
Although the Trade-marks Office is not aware of any interpretation of this section by the courts in Canada, similar provisions in the Trade-marks Acts of the United States and Great Britain have been the subject of consideration. In examining a mark in paragraph 9(1)(j)the examiners may be guided by the following:
- A scandalous word or design is one which is offensive to the public or individual sense of propriety or morality, or is a slur on nationality and is generally regarded as offensive.
- A word is obscene if marked by violations of accepted language inhibitions or regarded as taboo in polite usage.
- A word or design is immoral when it is in conflict with generally or traditionally held moral principles.
A mark consisting of the representation of a topless dancer combined with a second representation of the torso of a topless dancer was found contrary to paragraph 9(1)(j) and was refused by the Registrar pursuant to paragraph 12(1)(e). (See application No. 409,882.)
In an American case, the mark Bubby Trap as applied to brassieres was refused. Shyrock of the Patent Office Trademark Trial and Appeal Board in Re: Runsdorf, 171, U.S.P.Q. 443, stated:
…'Bubby Trap' as applied to brassieres would be offensive to a segment of the public sense of propriety or morality and is therefore prohibited by Section 2(a) of the Act. 'Vulgar,' as defined means, inter alia, lacking in taste, indelicate, morally crude, and can, in our opinion, be encompassed by the term
In order to determine if a word or design is scandalous, obscene or immoral, the examiners must determine whether the word or design would offend the feelings or sensibilities of a significant segment of the public.
In Oomphies Trade Mark (1946), 64 R.P.C. 27, Mr. Justice Evershed overruled the Registrar's decision to refuse to register the non-invented word Oomphies for shoes on the admitted ground that "oomph" was American slang for sex appeal. Evershed J., while overruling the Registrar, made it quite clear that he had no disagreement
I must wholeheartedly accept the proposition that it is the duty of the Registrar (and it is my hope that he will always fearlessly exercise it) to consider not merely the general taste of the time, but also the susceptibilities of persons, by no means few in number, who still may be regarded as old fashioned and, if he is of the opinion that the feelings or susceptibilities of
In another instance, the refusal to register a mark was based on the argument that the mark would offend people's religious sensibilities. In Hallelujah Trade Mark (1976), R.P.C. 605, the word Hallejlujah was refused registration in respect of articles of clothing for women on the grounds that the word had an overwhelming religious significance and, as applied to the wares, would offend accepted mores of the time.
IV.8.7 Paragraph 9(1)(k)
Since the wording of this paragraph lends itself to a broad interpretation, the examiners must pay particular attention to any way in which a mark might suggest a "false connection" with a living individual. The examiners must be aware of any details such as a nickname, caricature, original element of clothing or some other characteristic which the public associates with the living individual and which cannot be registered as a trade-mark if it falsely suggests a connection with that individual. See Carson v. Reynolds (1980), 49 C.P.R. (2d) 57.
IV.8.8 Paragraph 9(1)(l)
The wording of this paragraph is self-explanatory. However, examiners should also see sections IV.3.11 (Historical Characters) and IV.3.12 (Signatures) of this manual for a fuller commentary on the extent to which such material is seen as unregistrable.
IV.8.9 Paragraph 9(1)(m)
This paragraph is self-explanatory