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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