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You have sent in an application for a trademark for your homemade microgreens business. You have received confirmation from the Trademark Office that it has passed the initial stage of the Trademark Examination Report. What follows next?


The Advertisement Process


After the Trademark Office (the "Office") completes the initial examination process, and if the Office is satisfied that the trademark is registerable, then the Office will perform a pre-publication search. If no confusing trademarks are found, an approval notice will be issued to you. You should review the approval notice carefully for accuracy and if any errors are found, then you should contact the Office as soon as possible.


If there are no errors, then the Registrar of Trademarks ( the "Registrar") will proceed with advertising the application in the Trademarks Journal, which is a weekly publication issued by the Office.


Regulation 41

The nuts and bolts of the advertising is covered in Regulation 41 of the Trademarks Regulations SOR/2018-227. Regulation 41 requires that the application be advertised by publishing it on the website of the Canadian Intellectual Property Office with the following information:

(a) the application number

(b) the name and postal address of the applicant and of the applicant’s trademark agent, if any;

(c) any representation or description of the trademark contained in the application;

(d) if the trademark is in standard characters, a note to that effect;

(e) if the trademark is a certification mark, a note to that effect;

(f) the filing date of the application;

(g) if the applicant filed a request for priority in accordance with paragraph 34(1)(b) of the Act, the filing date and country or office of filing of the application on which the request for priority is based;

(h) the statement of the goods or services in association with which the trademark is used or proposed to be used, grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification;

(i) any disclaimer made under section 35 of the Act; and

(j) if the Registrar has restricted the registration to a defined territorial area in Canada under subsection 32(2) of the Act, a note to that effect.


Paragraphs 41 (a) – (f) & (h) are self explanatory and are simply reproductions of what is already provided at the application for registration stage, and they do not require any more discussion.


Paragraph 41 (g) Priority

Paragraph 41 (g) refers to any claim for priority based on paragraph 34(1)(b) of the Trademarks Act, which states:

34 (1) Despite subsection 33(1), when an applicant files an application for the registration of a trademark in Canada after the applicant or the applicant’s predecessor in title has applied, in or for any country of the Union other than Canada, for the registration of the same or substantially the same trademark in association with the same kind of goods or services, the filing date of the application in or for the other country is deemed to be the filing date of the application in Canada and the applicant is entitled to priority in Canada accordingly despite any intervening use in Canada or making known in Canada or any intervening application or registration, if

[...]

(b) the applicant files a request for priority in the prescribed time and manner and informs the Registrar of the filing date and country or office of filing of the application on which the request is based;

[...]

Subsection 34(1) (generally) and paragraph 34(1)(b) (specifically) allow for an applicant to claim priority of his trademark if he has filed an application for the same or substantially the same trademark for the same kinds of goods or services in another country of the Union within the last 6 months. Per the Trademarks Act, a “country of the Union” refers to


(a) any country that is a member of the Union for the Protection of Industrial Property constituted under the Convention, or

(b) any WTO Member; (pays de l’Union)


Let us assume that you have also registered a trademark for your homemade microgreens business in the United States (because it is such a big market). You sent the registration for the trademark within the last 6 months to the USPTO. The United States is a Union country, so under subsection 34(1), you can claim priority based on that application date, rather than the date you filed the Canadian application. Of course, you would have indicated this earlier priority claim in your original application, and now at this stage, it would be advertised.


Paragraph 41(i) Disclaimer

Paragraph 41(i) refers to a disclaimer made under section 35 of the Trademarks Act:


35 The Registrar may require an applicant for registration of a trademark to disclaim the right to the exclusive use apart from the trademark of such portion of the trademark as is not independently registrable, but the disclaimer does not prejudice or affect the applicant’s rights then existing or thereafter arising in the disclaimed matter, nor does the disclaimer prejudice or affect the applicant’s right to registration on a subsequent application if the disclaimed matter has then become distinctive of the applicant’s goods or services.


The history and treatment of disclaimers by the Registrar is interesting and potentially a subject of another blog post, but for our purposes here, we will just consider it in the context of the advertisement process. An applicant can voluntarily disclaim certain individual elements of a trademark because of their un-registrability in order to still salvage the trademark as a whole because the combination of elements are themselves distinctive. If you had made this disclaimer during the application process, then it would then be advertised with your application at this stage of the process.


Paragraph 41(j) Geographical Restriction

Regulation 41(j) refers to subsection 32(2) of the Trademarks Act:


32 (2) The Registrar shall, having regard to the evidence adduced, restrict the registration to the goods or services in association with which, and to the defined territorial area in Canada in which, the trademark is shown to be distinctive.


Imagine that your trademark for your microgreens business was very similar to another company, which had been doing business for many years and was very popular, but only in Quebec. The Registrar may decide that your trademark is confusingly similar to this other Quebecois trademark and allow your registration to proceed on the condition that it does not apply in Quebec. If such a restriction applies to your application, then the details of this restriction would also be advertised.


Withdrawal of the Advertisement

Even though your trademark has made it to the advertisement stage, you are not yet out of the woods. The Registrar still has the authority to withdraw the advertisement under subsection 37(4).


37 (4) If, after the application has been advertised but before the trademark is registered, the Registrar is satisfied that the application should not have been advertised or was incorrectly advertised and the Registrar considers it reasonable to do so, the Registrar may withdraw the advertisement. If the Registrar withdraws the advertisement, the application is deemed never to have been advertised.


The Trademark Examination Manual (the “Manual”) provides some guidance on when the Registrar may be satisfied that an application should not have been advertised:

  • the applicant was not entitled to registration in view of a confusing pending application;

  • an objection under section 12 of the Trademarks Act was overlooked or withdrawn in error

(See 6.6)


The Manual also provides some indication when the Registrar may be satisfied that an application was incorrectly advertised, and that would be in situations “where information, amendments or statements that were included in the latest application were omitted from the advertisement in error” (See 6.6).


Next Steps

Let us imagine that your advertisement was successfully published in the Journal and was not withdrawn by the Registrar. Per subsection 38(1) of the Trademarks Act, within two months after the advertisement of an application for the registration of a trademark, any person, on payment of the prescribed fee, may file a statement of opposition with the Registrar to oppose the registration by the applicant of the mark in question. Trademark opposition will be the next installment in our trademark series, so please consider signing up to ensure you receive the notification for our next article.


Do you need to register your trademark? Andrew Roy is a Trademark Agent (Class 3) and a Trademark Lawyer that can help protect your rights. Call us today at 587.896.2769 or book a free, no obligation Zoom consultation



The information in IP Iteration is not legal advice and does not establish an attorney-client relationship.


© 2022 Andrew Roy




If you enjoy this content, please consider signing up as a member. Creating a member account will ensure you will:


· receive new content delivered directly to your inbox;

· have exclusive access to members only content;

· gain access to our online booking tool;

· collect points in our points program.


You are a social media content creator, and you have a trademark that is associated with your business. You have read Registration of a Trademark and have decided to submit an application to register your trademark. What happens next?


Initial Steps and Subsection 33(1)

Most trademark applications are filed electronically through the Trademark e-filing application. Once they are submitted, the Incoming Correspondence Unit of the Trademark Office (the “Office”) transfers the e-filing application to the Formalities Section, which then assigns the application with a number.


The Office will then provide a filing date if the application meets the filing requirements under subsection 33(1) of the Trademarks Act.


33(1) The filing date of an application for the registration of a trademark in Canada is the day on which the Registrar has received all of the following:

(a) an explicit or implicit indication that the registration of the trademark is sought;

(b) information allowing the identity of the applicant to be established;

(c) information allowing the Registrar to contact the applicant;

(d) a representation or description of the trademark;

(e) a list of the goods or services for which registration of the trademark is sought;

(f) any prescribed fees.


These initial steps ought to be met if you filled out the forms correctly in the application process. If you have met these requirements, then the application is now formalized and entered into the trademarks database. Receipt of the application is acknowledged, which is then sent to you. The Formalities Section then transfers your application to the Examination Section where it is searched and examined.


Examination according to Section 30


This Examination Section of the Office will begin with an examination of your application according to ss. 30(1) (read more about the changes s. 30 has undergone). Subsection 30(1) states that a person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services (emphasis mine).


This initial examination is more of less a formality, unless you have indicated on your application that you have never used the mark, have no intention of using it, that you are not entitled to use it, or that it is not associated with any goods and services.


Following this “pre-examination”, the Office will then perform a more detailed review of your application to ensure that it aligns with subsection 30(2).


30(2) The application shall contain

(a) a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used;

(b) in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used;

(c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and

(d) any prescribed information or statement.


When you submitted your trademark application, you were required to provide a statement in ordinary commercial terms of the goods or services in association with which your trademark is being used. This step generally means using the Nice Classification categories and sub-categories to identify the goods or services in association with your trademark. In addition to this information, you were also required to provide a representation or description (or both) of your trademark. The specifics of this requirement depends on the type of mark. For example, a design mark will generally require a representation, where a word mark will require a description.


As the Office is evaluating your trademark according to ss. 30(2), the Office will also perform searching of your trademark to ensure that it is not confusing with another registered trademark or pending application trademark (See section 16). The Office will also consider whether the trademark is registerable, including its distinctiveness (See section 2 and section 12, and for a more in-depth discussion on these sections see Registration of a Trademark).


Examination Report

Once the Registrar finishes its initial examination, it will then produce an Examination Report. This Examination Report is considered the “first action,” and it ought to list and address all (if any) defects in your application before your application can proceed to the next step.


At this stage, the Office can refuse your application for registration for the reasons enumerated in section 37.


37 (1) The Registrar shall refuse an application for the registration of a trademark if he is satisfied that

(a) the application does not conform to the requirements of subsection 30(2)

(b) the trademark is not registrable,

(c) the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending, or

(d) the trademark is not distinctive.


If the Office does refuse your application on these grounds, you may reply in writing why you believe the Office’s objection is incorrect. The reply must be based on the statutory scheme of the Trademarks Act and must be in response to the reasons provided in the objection. For example, if your trademark was rejected because it was not distinctive, you must explain and provide evidence why it is distinctive (See section 32) Or, if you did not provide the proper description of goods for your trademark, you can amend the application to include the correct description. If you cannot satisfy the Office that the application should proceed, then the Trademarks Office will issue a final letter indicating its decision to refuse your application.


However, if the Office completes the initial examination process and it is satisfied that the trademark is registerable, then the Office will then advertise your application in the Trademarks Journal. You must note that between the period of time when the Office’s duty to advertise vests and the time when the publication of the advertisement actually occurs, the Office may still reverse the decision to schedule the advertisement if facts have arose which would warrant a refusal to register under section 37.


Contact Us

Have you submitted an application to register a trademark and received a Trademark Examination Report? Do you need advice on how to respond? Andrew Roy is a Trademark Agent that can help you protect your rights. Call us today at 587.896.2769 or book a free, no obligation Zoom consultation



The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship.

© 2022 Andrew Roy




If you enjoy this content, please consider signing up as a member. Creating a member account will ensure you will:

  • have new content delivered directly to your inbox;

  • have exclusive access to member only content;

  • have access to our online booking tool.


Imagine you are a technology company that has been in business for 5 years. You registered a trademark in 2018 and have just read Registration of a Trademark, where we talk about how section 30 is necessary to have your logo or trademark registered. You notice that the section 30 when you registered your first trademark looked quite different than the one cited in that article. You remember that there was some specific requirement in section 30 because your trademark was not being used in Canada. What happened? Did the section change?


Legislative History of the change to Section 30

If you registered your trademark prior to June 19, 2019, you would have seen a different section 30. The Economic Action Plan 2014 Act, No. 1 (S.C. 2014, c.20) changed many parts of the the Trademarks Act, including section 30.


The Economic Action Plan 2014 was assented to on June 19, 2014, but the provisions modifying s. 30 of the Trademarks Act came in force on June 17, 2019. Section 368 of the Economic Action Plan Act stated that the provisions related to the Trademarks Act, other than section 367, would come into force on a date prescribed by an Order in Council. On October 29, 2018, Order in Council SI/2018-100 fixed that date to be June 17, 2019.


Section 30 Pre-June 17, 2019

The Pre-June 17, 2019 section 30 of the Trademarks Act stated that

30 An applicant for the registration of a trade-mark shall file with the Registrar an application containing

(a) a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used;

(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of goods or services described in the application;

(c) in the case of a trade-mark that has not been used in Canada but is made known in Canada, the name of a country of the Union in which it has been used by the applicant or his named predecessors in title, if any, and the date from and the manner in which the applicant or named predecessors in title have made it known in Canada in association with each of the general classes of goods or services described in the application;

(d) in the case of a trade-mark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or the applicant’s named predecessor in title on which the applicant bases the applicant’s right to registration, particulars of the application or registration and, if the trade-mark has neither been used in Canada nor made known in Canada, the name of a country in which the trade-mark has been used by the applicant or the applicant’s named predecessor in title, if any, in association with each of the general classes of goods or services described in the application;

(e) in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada;

(f) in the case of a certification mark, particulars of the defined standard that the use of the mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used;

(g) the address of the applicant’s principal office or place of business in Canada, if any, and if the applicant has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm to whom any notice in respect of the application or registration may be sent, and on whom service of any proceedings in respect of the application or registration may be given or served with the same effect as if they had been given to or served on the applicant or registrant himself;

(h) unless the application is for the registration only of a word or words not depicted in a special form, a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed; and

(i) a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the goods or services described in the application.


General Requirements

Under these provisions, all trademark application required a statement, in ordinary commercial terms, of the specific wares or services in association with which the mark has been used or is proposed to be used. For a situation where the trademark was being used, the wares or services must be grouped into general categories. The application also required the name and the address of the applicant’s principal office, or place of business in Canada. If the applicant lived abroad, then it also required the address of the applicant’s principal office or place of business abroad, as well as the name and address of a person or firm to whom any notice in respect of the application or registration may be sent (in Canada). Unless the trademark was for a tradename, it also required a drawing of the trademark and such number of accurate representations of the trademark as may be prescribed.


Specific Requirements

Section 30 also had specific requirements based on different categories. For an application based on use in Canada, the applicant must have provided a date from which the applicant, or any predecessors in title, had used the trademark in association with each of the wares or services described in the application.


For an application where the trademark was not used but was made known in Canada, the applicant must have provided the name of the country of the Union in which the trademark had been used by the applicant or any predecessors in title.


In the case of an application where the trademark was subject to registration in another Country in the Union, the applicant must have provided particulars of the foreign application or registration.


In the case of a proposed trademark, the application must have contained a statement that the applicant, by itself or through a license, intended to use the trademark in Canada.


For a certification mark, the applicant must have provided the Registrar with the particulars of the defined standards that the applicant intended to indicate by the mark, as well as a statement that the applicant is not engaged in the manufacture, sale, leasing, or hiring of wares or the performance of services such as those specified to be used in association with the certification mark. The applicant must have also furnished a certified copy of the registration certified by the office in which it was made.


Let's return to your previous trademark registered in 2018. As your trademark was only for proposed use (i.e. not actually in use yet), then that version of section 30 specifically stated that you were required to submit a statement that the applicant, by itself or through a license, intended to use the trademark in Canada.


Section 30 Post-June 17, 2019

The current Section 30 of the Trademark Acts reads different than the previous section 30. It states that

30 (1) A person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services.

Contents of application

(2) The application shall contain

(a) a statement in ordinary commercial terms of the goods or services in association

with which the trademark is used or proposed to be used;

(b) in the case of a certification mark, particulars of the defined standard that the use

of the certification mark is intended to indicate and a statement that the applicant is not

engaged in the manufacture, sale, leasing or hiring of goods or the performance of

services such as those in association with which the certification mark is used or proposed to be used;

(c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and

(d) any prescribed information or statement.

Nice Classification

(3) The goods or services referred to in paragraph (2)(a) are to be grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification.

Disagreement

(4) Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.

Section 30(1) does not provide the same distinction on the face of the section as did the previous section 30. There is no explicit distinction between the application for trademarks that have been used in Canada, is made know, are proposed to be use, or that are subject to another country in the Union. Instead, 30(1) states that a person may file a trademark application for any trademark if they are using it, propose to use it, and are entitled to use it in Canada, and subsection 30(2) provides the requirements of that application.


Paragraph 30(2)(a) restates the old subsection (30)(a), expect that it removes the word “specific” (more on that below). Subsection 30(2)(b) discusses the certification mark which 30(1)(f) used to cover, but it also adds “proposed to be used." Subsection 2(c) covers what type of representation you are required to submit with the application. The new subsection only refers to a prescribed representation, but it does not explicitly require a drawing of the trademark. Subsection 30(2)(d) also requires another prescribed information or statement be submitted.


Unlike the previous section 30, the new version tries to streamline the section. It does not make any specific requirements based on the type of use of trademark (i.e. use vs. proposed use); instead, it points to the "prescribed requirements" and "prescribed information or statement."


“Prescribed” in the legal world almost always means that one needs to check the regulations passed with that piece of legislation (a future blog post will look more closely at the specific requirements of the regulations under the Trademarks Act). Oftentimes, a legislative drafter will use the term "prescribed" to provide the administrative bodies (like the Registrar) with greater flexibility to modify the technical requirements without having to change the actual piece of legislation. At the same time, this approach makes the process more complex for the registrant because now one is required to know how to reference any regulatory information to "fill in the gaps."


Subsection 30(3) explicitly adds the requirement that the classes must be grouped according to the Nice Classification. The specification of Nice Classifications in section 30 simply made explicit what was implicit previously.

Subsection 30(4) states that any questions regarding which goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal. This inclusion of not allowing an appeal the Registrar’s decisions is done to provide finality to the decision, but one could expect an enterprising lawyer to challenge this provision at some point in the future.


Tow Services International, Inc & Montobacco Ltd

Even though the new section 30 of the Trademarks Act came into force on June 17, 2019, the transitional provisions create a situation where some trademarks are still subject to the old section 30 rather than the new one. Like all legislative clauses, they are subject to the interpretation of the court (a future blog post will tackle the case law behind these transitional sections).


For now, the vast majority of case law occurring after June 17, 2019 exclusively deals with the old section 30. We still do not have a good idea on how or whether the courts will distinguish and differentiate the old section with the new.


In Tow Services International, Inc. v. Trademark Factory 2021 FC 550, 2021 CF 550, the Federal Court essentially read in a specificity clause that was removed in the new subsection 30(1). The court found that this specificity requirement was still retained in section 30 because of section 29 of the new Trademark Regulation, SOR/2018-277: “absent further legislative or regulatory amendment to remove the requirement altogether, the need for specificity in the statement of goods or services remains applicable throughout the life of a trademark registration. [. . . ] In other words, the extension application must comply with old Paragraph 30(a) of the Trademarks Act or the new Section 29 of the Trademarks Regulations.” As discussed above, this case seems to confirm that the new section 30 "leans" more heavily on the regulations than the previous one.


In Montobacco Ltd. v. Marley Green LLC 2021 COMC 87, 2021 TMOB 87, the trade-mark opposition board sidestepped the issue in its entirety, relying on the transitional clauses mentioned above. In this case, the opponent opposed a trademark on grounds that included the old sections 30(a), 30(e), 30(g), and 30(i). The court stated that “all references in this decision are to the Act as amended, with the exception of references to the grounds of opposition.” In other words, the board recognizes the new Act, but due to the transitional clauses, it doesn't have to worry about the new section 30!


Even though we are now 3 years from when the new section 30 came into force, the judicial treatment of this section remains sparse.


Have any questions about trademarks? Andrew Roy Legal helps businesses of all sizes on every stage of the trademark process. Call us today at 587.896.2769 or book a free, no obligation zoom consultation



The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship.


© 2022 Andrew Roy

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