Trade-Marks Examination Manual (page 49 of 55)
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V The Examiners' Reports
V.1 Objection to Registration — Subsection 37(2)
According to the provisions of subsection 37(2), the Registrar shall not refuse any application without first notifying the applicant of the objection to registration and the reasons for it. Also, the applicant must be given adequate opportunity to answer such objections.
The Registrar's objections to registration are communicated to the applicant by way of the examiners' reports and deal with: 1) the conformity of the application to the requirements of section 30; 2) whether the subject matter sought to be registered comes within the meaning of a trade-mark as defined in section 2 of the Act; 3) the registrability of the trade-mark in light of the provisions of sections 9, 10 and 12; and 4) the applicant's entitlement to registration in light of rival applicants in accordance with the provisions of section 16.
V.2 First Actions
The examiners' reports are prepared after the initial examination of the application and the trademark for which registration is requested, and is referred to as the "first action."
The examiners' first action must deal with all requirements which need to be remedied before the application can proceed to advertisement. The examiners must not engage in piecemeal reporting because this leads to undue protraction of the examination process and a high incidence of oversight and error. It is also disconcerting for the applicant (or the agent) who has complied with the requirements of an examiner's report to be told in a subsequent report that there is a sound statutory bar to registration.
V.3 Standard Paragraphs
First actions are, for the most part, written in standardized form. The examiners may use either the pre-printed form covering a number of common objections and formal requirements or a series of "standard paragraphs" that are retained on the computer systems in the Word Processing Section.
The standard paragraphs have been coded according to subject matter. When composing the report, the examiners designate, by code number, the paragraphs which most accurately describe the requirements or objections which apply to the trade-mark application in question. However, to comply with the provisions of subsection 37(2), the examiners must give reasons for statutory objections and so will incorporate the information necessary for a fuller explanation of the objection. Reports are prepared in duplicate, with one copy kept on file. Circumstances which require issuing of examiners' reports are described below.
V.4 Wares or Services
The statement of wares or services will be deemed unacceptable and an amended application required in the following cases:
- If the applicant does not name the specific wares or services in ordinary commercial terms. This also applies when wares are described according to function or in any similar fashion. The examiners must, for example,comprehend the general class designation used by the applicant. Terms such as "accessories" or "equipment" or "products" in, for example, "ladies dresses and accessories" or "artist's equipment" or "agricultural products" will be questioned.
- When further information is required as to how wares or services are used in commerce — for example, if the examiners are unable to identify the area of use of the wares or services. In this case the examiners may ask for illustrative or advertising materials.
V.5 Paragraph 12(1)(a)
An objection or disclaimer request pursuant to paragraph 12(1)(a) must be supported by giving the number, or an approximate number, of the names or surnames found in the directories.
V.6 Paragraph 12(1)(b)
An objection or a disclaimer request based on "descriptiveness" or "deceptive misdescriptiveness" must be supported by identification of the sources of information on which the examiner based the objection and/or an explanation as to how that information applies to the description of the particular wares or services. An exception is made when the descriptive objection is based on the fact that the trade-mark is an obvious laudatory epithet.
An objection under paragraph 12(1)(b) should not be made on the basis of information obtained as a result of oral enquiry only. Information received from telephone conversations and the like is only used to confirm that an objection should or should not be raised.
V.7 Paragraph 12(1)(c)
An objection or a disclaimer request, based on the fact that the trade-mark is the name of the wares or services in any language, should be supported by factual evidence, usually dictionary definitions establishing that the word or words identify wares or services in whatever language.
V.8 Paragraph 12(1)(d)
An objection based on paragraph 12(1)(d) is always supported by a copy of the registration of the trade-mark with which the applicant's trade-mark is considered to be confusing within the terms of subsection 6(2) of the Act. The examiners should always verify that the copy relates to the appropriate registration, identified by registration number and that the registered trade-mark is in good standing.