Trade-Marks Examination Manual (page 44 of 55)
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IV.9.3 Portions Independently Registrable — No Disclaimer Request
Disclaimers should not be requested for portions of marks which have been registered upon proof of distinctiveness in respect of the wares/services applied for. That is,
- The portion of the mark has been previously registered for similar wares or services under the TMDA or UCA.
- The portion of the mark has been previously registered for similar wares or services on the basis of acquired distinctiveness pursuant to subsection 12(2), or registered on the basis of being "not" without distinctive character pursuant to section 14.
In the cases mentioned above (1 and 2), the examiners will have the application published with the statement: "The applicant is the owner of registration no" This is in lieu of a disclaimer.
- The portion is in a language other than English or French and is clearly descriptive or deceptively misdescriptive of the wares or services associated with the trade-mark.
- The mark as a whole is not descriptive and the portion comprises the following words or abbreviations: Limited, Ltd., Corporation, Corp., Incorporated, Inc., Company, Co., Product(s), and Brand (s).
IV.9.4 Marks Non-Registrable, Even with Disclaimer
In a number of circumstances, a mark, when considered as a whole, is not registrable, even though a part or each part of the mark applied for has been disclaimed. See the following paragraphs under this section.
IV.9.4.1 Disclaimer - Deceptively Misdescriptive or Misleading Prohibited Matter
If the disclaimed portion of the mark applied for is deceptively misdescriptive and non-registrable pursuant to paragraph 12(1)(b), or if the disclaimed portion of the mark applied for is a prohibited mark pursuant to section 10, and the wares/services are not of the kind, quality, etc. covered by the prohibited mark, the mark as a whole is not registrable if the non-registrable or prohibited disclaimed portion forms a significant part of the mark.
In Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103 at p. 109, Dubé J., after finding it would not be difficult to visualize the appellant's trade mark without the word Premier, stated:
In my view a disclaimer ought not be used in relation to a deceptively misdescriptive matter so as to render the mark as a whole registrable when the unregistrable matter is a dominant feature of the composite mark. After all, the disclaimer does not appear on the mark and the deception stands visually overwhelming.
IV.9.4.2 Disclaimer - Confusing Marks
A disclaimer does not overcome an objection of confusion with a registered trade-mark pursuant to the provisions of paragraph 12(1)(d) or a pending trade-mark pursuant to subsections 16(1), (2) and (3).
In American Cyanamid Co. v. Record Chemical Co. Inc. (1972), 7 C.P.R. (2d) 1, Noel J. found the mark Pine-L, as applied for in relation to disinfectants, confusing with the registered mark Pine Sol for use in association with detergents, deodorants, and disinfecting and bleaching fluids, even though the registrant had disclaimed the right to the exclusive use of the word "pine" apart from the trade-mark. At p. 5 Noel J. stated:
The appellant, (registrant), as already mentioned, disclaimed the word 'pine' but the marks must still be considered in their totalities in determining whether there is a likelihood of confusion between them.
See also Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103.
IV.9.4.3 Disclaimer — All Elements of Trade-mark
A disclaimer of all the elements of a trade-mark is not acceptable if the trademark considered as a whole is unregistrable and does not contain any distinguishing feature. In Ingle v. Registrar of Trade Marks (1973), 12 C.P.R. (2d) 75, at p. 77, Addy J., after noting that the applicant had disclaimed the Student Life, and after considering the applicant's submission that it had the right to have the mark itself registered, stated:
This might very well be true if there were a mark or anything sufficiently peculiar in the form or layout of either of the words or of any of the letters to which the registration might attach.
And further:
To constitute a mark, there must be a pictorial representation or design, or something which marks or distinguishes it in some way and allows it to be recognized.
See Canadian Jewish Review Ltd. v. Registrar of Trade Marks (1961), 37 C.P.R. 89, where despite the disclaimer to the words The Canadian Jewish Review 93, Cameron J. stated:
In my opinion, the trade mark in spite of the design features is still clearly descriptive in the English language of the character of the wares or services with which it is used. Notwithstanding the disclaimer, the four words (admittedly not registrable per se) still form the material part of the trade mark and in spite of the added design features still spell out 'The Canadian Jewish Review.' Both the words themselves and the Hebraic letterpress are publici juris and their combination without at least any design features exclusive of the letters does not in my view on the evidence before me make the mark, when considered as
In John Labatt Ltd. v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 110, Cattanach J. after noting that the applicant had disclaimed the words Super and Bock, said:
Since the two words 'super bock' form a most material part of the trade mark, despite the disclaimer of those two words, and there is no design feature exclusive of the letters and their positioning it follows from the reasoning of Cameron J. which I adopt and apply, the trade mark as a whole cannot be other than clearly descriptive of the
In each case the examiners must decide whether or not the mark as a whole is registrable when the individual elements are disclaimed.
Where a disclaimer is applied separately and independently to the different parts comprising a trade-mark there must be some distinctiveness in the combination of the words such that the mark, even with the disclaimers, is still registrable.
For example: Coffee Crisp for chocolate-coated biscuits; Commerce Capital for real estate services and financial services; Terry Crepe for textile goods; and Burger Dog for sandwiches.
IV.9.4.4 Disclaimer — Protected Geographical Indications for Wines or Spirits
A disclaimer does not overcome a paragraph 12(1)(g) or (h) objection to a portion of a mark.
IV.9.5 Form of Disclaimers
When the examiners have thoroughly assessed all the facts, and have determined that a disclaimer clause is necessary, the applicant will be required to enter a disclaimer of the unregistrable portion of the mark as shown in Form 1, paragraph 3. Each portion of the mark applied for which is not independently registrable must be disclaimed pursuant to section 35.
The examiners may request that an applicant amend the application: a) by requesting that a disclaimer clause be inserted in the application of each independently unregistrable portion of the trade mark; or b) by requesting an amendment of the disclaimer clause to include a disclaimer of independently unregistrable material not already disclaimed; or c) by requesting a revision of the original disclaimer statement so as to require a disclaimer statement in the proper form.
Failure to comply with a disclaimer request within the time allowed for its entry means that the applicant will be found to be in default of the prosecution of the application, thus giving the examiners the authority to institute abandonment procedures pursuant to section 36.