Trade-Marks Examination Manual (page 50 of 55)
This manual also available as PDF
Trade-Marks Examination Manual (PDF - 1 MB - 247 pages)
Previous | Table of Contents | Next
V.9 Paragraph 12(1)(e)
When raising a paragraph 12(1)(e) objection, the examiners must be careful to distinguish between the basis for the objection and the reasons for it. The reasons for objection are set out in subsection 9(1) and section 10 of the Act, while its basis is in the provisions of paragraph 12(1)(e).
When an objection to registration is made for a mark which is prohibited by reason of public notice having been given pursuant to paragraphs 9(1)(e), (i) or (n), it must always be supported by a copy of the public notice.
When an objection to registration is made for a mark which is prohibited, as defined in section 10 of the Act, the examiners must provide evidence which shows ordinary and bona fide commercial usage of the mark.
V.9.1 Paragraph 12(1)(f)
When raising a paragraph 12(1)(f) objection, the examiners must provide a copy of the plant variety denomination published in the Plant Varieties Journal.
V.9.2 Paragraphs 12(1)(g) and (h)
When raising an objection based on paragraphs 12(1)(g) or (h), the examiners must provide information pertaining to the protected geographical indication.
V.10 Section 16
The following is an example of how to evaluate entitlement between co-pending confusing applications:
- Applicant: ABC Company
Mark: AJAX
Wares: motor trucks — registered and used abroad basis
Filed: December 1, 1993
Priority Date: August 3, 1993 - Applicant: XYZ Company
Mark: AJAX
Wares: Motor-driven vans — used in Canada basis
Filed: January 2, 1994
Used in Canada: September 11, 1992
In the above case, XYZ Company, which has used the mark in Canada since September 11, 1992 is
Had both companies filed on the basis of registration and use abroad, or proposed use in Canada, ABC Company would have been entitled over XYZ Company by reason of its earlier priority filing date.
V.11 Multiple Claims
It may happen that an application contains an allegation to use or making known in Canada, and use and registration abroad, and/or proposed use in Canada, for a trade-mark which is found to be confusing with a trade-mark in an application subsequently filed. If the application bearing the later filing date discloses earlier use of the trade-mark in Canada in association with the same or similar wares or services, then it will be considered to be the entitled one by virtue of the provisions of paragraph 16(1)(a).
Examiners should exercise care when making a determination as to the person entitled between rival applicants where applications for registration are based on two or more of the provisions of section 16. The applicant's entitlement to registration must be assessed in respect of and in accordance with the provisions of each of the claims under subsections 16(1), (2) or (3) made in the application. (See example below).
- Applicant: ABC Company
Mark: AJAX
Wares:- Plant growth regulators - used in Canada since June 1993 — 16(1)
- Insecticides - registered and used abroad — 16(2)
- Hair colouring preparations - proposed use — 16(3)
Filed: September 11, 1994 - Applicant: XYZ Company
Mark: AJAX
Wares: Shampoo and hair bleaching preparations - used in Canada since May 11, 1993 — 16(1)
Filed: December 2, 1994.
Note: XYZ Company is the entitled applicant because the date of use of the trade-mark in Canada, in association with shampoo and hair bleaching preparations, is earlier than the date of filing of the ABC Company's application for intended use of a trade-mark in association with hair colouring preparations.
The non-entitled applicant may withdraw the claim based on proposed use of the trade-mark in Canada, and request registration of the trade-mark in respect of insecticides and plant growth regulators, thereby removing the objection to registration based on the non-entitlement.