Trade-Marks Examination Manual (page 42 of 55)
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IV.9 Disclaimers — Section 35
This section enables an applicant to disclaim certain portions of a trade-mark which would otherwise be unregistrable, subject to the conditions set out in this section of the manual. See also section II.6.4 of this manual.
In Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103 at 107, Dubé J., after reviewing a number of cases relating to disclaimers, stated:
The role and effect of disclaimers is discussed in Fox, Canadian Law of Trade Marks and Unfair Competition, 3rd ed., p. 238. It is pointed out that, even when parts of a mark taken separately may not be capable of registration, the mark when taken as a whole may be distinctive and so registrable, but 'nevertheless, the practice of combining registrable and unregistrable material in a registration is one that should be avoided and means for its avoidance provided'. It is stated that the practice of disclaimers is a valuable one in that it allows a registration to contain matter which standing alone 'is non-distinctive'. The practice was given statutory authority by s.34.
In their original applications, many applicants include disclaimers of portions of the trade-mark which are not independently registrable. The form of the disclaimer is found in Form 1 and reads as follows:
The applicant disclaims the right to the exclusive of _____ apart from the trade-mark.
The inclusion of the disclaimer in the original application saves both the applicant and the Office time and, in many cases, avoids an unnecessary first action requesting a disclaimer. When an application has no disclaimer, the examiners must determine if any portion of the mark contravenes the pertinent provisions of section 12 and, if so, must request that the application be amended to include a disclaimer.
On applications to extend the statement of wares/services, a disclaimer must be requested, if warranted, even if matter was disclaimed in the original registration. See section II.7.7 of this manual on extension of wares/services applications.
Note: A requirement for a disclaimer cannot be overcome by invoking subsection 12(2) or section 14 and submitting evidence relating to the trade-mark as a whole. It can only be overcome by satisfying the Registrar that the subject matter of the proposed disclaimer is independently registrable.
In other words: Does the applicant have a per se registration or an allowed application under subsection 12(2) or section 14 or a per se registration under the UCA or TMDA (with or without evidence) pertaining to the unregistrable subject matter? If so, the subject matter is considered independently registrable and therefore the mark will be published with the notation: "The applicant
Note: An applicant can, in some instances, establish that a portion is independently registrable through argument.