TRADE-MARKS University of Toronto IP298HS Cynthia Mason – [email protected] –...

TRADE-MARKS

University of TorontoIP298HS

Cynthia Mason – [email protected] – 416.216.4841

March 17, 2005 © Cynthia Mason, 2005

2481-0304

mailto:[email protected]

2

Outline

• Trade-mark Searching

• Procedure for Trade-mark Registration

• Registrable Trade-marks

3

Types of trade-mark searches

Opinions

Trade-mark Searching

4

Locate Search

• Trade-marks Office register

• Identical trade-marks

Types of Trade-mark Searches

5


•Registrability Search

Trade-marks Office register

Similar or confusing trade-marks

• Phonetic equivalents

• Visually similar marks

• Marks in similar channels of trade

6

Availability Searches

• Trade-marks Office register

• Common law sources

• Business names

• Trade directories

• Magazine and newspaper articles

• Internet

• Specialty sources – pharmaceutical indices, catalogues


7

After the Search

• Opinion Limitations of search

• Follow up investigation

• File trade-mark application

8

Procedure for Registering Trade-marks

•Application

•Examination

•Approval/Advertisement

•Allowance

•Registration

9

Application

• Trade-marks Act, RSC 1985, c. T-13

Section 30 – Contents of Application

• Trade-marks Regulations (1996), SOR/96-195

Sections 24 to 29 – Formalities

Sections 30 to 33 - Amendments

10

Application

1. Applicant’s Name and Address

• Individual

• Partnership

• Joint venture

• Corporation

• Association

11

Application

2. Trade-mark

Words

Designs

Patterns on 3D objects

Shapes of wares or packaging (distinguishing guise)

Certification mark

Official mark

12

Application

3. Wares or Services

• Specific and ordinary commercial terms

• Amendments

13

Application

4. Basis for Application

Use in Canada

Making Known in Canada

Foreign Application or Registration and Use

Proposed Use in Canada

14

Application

5. Priority Claim

Foreign application filing date

6. Entitlement Claim

7. Representative for Service in Canada

8. Filing Fee

15

Examination

• Formal requirements

• Description of wares and services – Act, s. 30(a)

• Foreign registration certificate – Act, s. 31(1)

• Drawing – Regulations, ss, 27 and 28

• Translation and Transliteration – Regulations, s. 29

• Registrability

• Entitlement to registration

16

Examination

• Entitlement to registration

• Trade-mark confusing with a co-pending application

• Trade-marks Act, s. 16

17

Approval/Advertisement

• Trade-marks Journal

• Amendments

• Opposition

Trade-marks Act, s. 38

Trade-marks Regulations, ss. 35 to 47

18

Allowance/Registration

• Declaration of Use in Canada

• Fee

• Continued use


• Renewal

19

Names or Surnames

Clearly descriptive or deceptively misdescriptive

Confusing with registered trade-mark

Prohibited marks

Distinguishing guises

Registrable Trade-marks

20


Names and Surnames

Trade-marks Act, s, 12(1)(a) – primarily merely the name or surname of an individual who is living or has died within preceding 30 years.

Rationale

• Fairness

• Inability of names and surnames to distinguish

21


Names and Surnames

“primarily merely”

• Principal meaning is nothing more than a name or surname

• Perspective of Canadian of ordinary intelligence and education

• Other meanings

• Examples – Brown, Swan

• Acquired secondary meaning (distinctiveness)

• Trade-marks Act, s. 12(2) or s. 14

• Examples – Coles, McDonalds

22


Names and Surnames (continued)

Disclaimer


Well known historical persons

• Example – George Washington

Fictitious Names

• Example – Peter Cottontail

23


Clearly Descriptive or Deceptively Misdescriptive

Trade-marks Act, s. 12(1)(b) – whether written, depicted or sounded, either clearly descriptive or deceptively misdescriptive of character, quality, conditions of production or place of origin of wares or services

Rationale

• Fairness

• Inability of descriptive words to distinguish

24



“Clearly”

• Self-evident, plain or easy to understand

• First impression

• Perception in connection with wares and services

• Perspective of ordinary everyday dealer in or purchaser of wares or services

25



Character

• Feature, trait, function or result

• Examples – KOOL ONE (beer), BRIGHTS CHILLABLE RED (wine), THE GOOD SLICE (cheese)

Quality

• Laudatory epithets

• Examples – BEST BUY, SUPER SCRABBLE

26



Conditions of production or persons employed in production

• Examples – KILNCRAFT (wares), KREBS ENGINEERS

Place of Origin

• TORONTO LIFE (magazines), SWISS FORMULA (lotions)

27



Whether depicted, written or sounded

• Descriptive designs

• Descriptive word/design composite marks

• Best Canadian Motor Inns Ltd. v. Best Western International, Inc., 2004 FC 135.

28



Deceptively misdescriptive

• Marks that would deceive consumers into making false buying decisions

• Examples – SHAMMI (gloves with no chamois), LIVER DINNER (cat food)

29



Disclaimer


Acquired distinctiveness

• Trade-marks Act, s. 12(2) or s. 14

• Clearly descriptive words are registrable if they have been used by an applicant so as to have become distinctive

• Examples – CANADIAN (beer)

30


Confusing with Registered Trade-mark

• Trade-marks Act, s. 12(1)(d)

• Confusion

• Trade-marks Act, s. 6(2)

• Use of trade-marks in same area would be likely to lead to the inference that they have the same origin

31


Confusing with Registered Trade-mark

• Trade-marks Act, s. 6(5)

• Factors to consider in determining confusion

• “all the surrounding circumstances” including

• Inherent distinctiveness and extent to which marks known

• Length of time in use

• Nature of wares or services

• Nature of trade

• Degree of resemblance in appearance, sound or ideas suggested

• Other circumstances

32


Prohibited Marks

• Trade-marks Act, ss. 12(1)(e), 9 and 10

• Marks consisting of or so nearly resembling as to be likely to be mistaken for

Royal crests, arms, etc.

Government arms, crests, flags, RCMP

Red Cross, United Nations, other international symbols

Scandalous, obscene or immoral words or designs

Matter falsely suggesting connection with individual, portraits and signatures

Official marks

33


Prohibited Marks

• Official marks

Trade-marks Act, s. 9(1)(n)

Badges, crests, emblems or marks adopted and used by Canadian Forces, any university, or any “public authority”

“Public authority”

• Subject to significant degree of government control

• Public benefit

34


Prohibited Marks

• Official marks

Not limited to specific wares and services

Not removable from register

Can be registered and used by others with consent of public authority

35


Prohibited Marks

Well known commercial symbols of quality, quantity, value, and place of origin (Trade-marks Act, s. 10)

• Examples – XXX (beer), Canadian Champagne

Plant varieties (Trade-marks Act, s. 10.1)

Geographical indications for wine and spirits (Trade-marks Act, ss. 12(1)(g) and (h))

36


• Distinguishing guises


Registrable only if distinctive and its exclusive use is not likely to unreasonably limit the development of any art or industry

Examples

37


• Distinguishing guises

TRADE-MARKS

University of TorontoIP298HS

Cynthia Mason – [email protected] – 416.216.4841

March 17, 2005 © Cynthia Mason, 2005

2481-0304

mailto:[email protected]

TRADE-MARKS University of Toronto IP298HS Cynthia Mason – [email protected] –...

Documents

Transcript of TRADE-MARKS University of Toronto IP298HS Cynthia Mason – [email protected] –...