On August 15, 2007, the Trade-marks Office published a Practice Notice in the Trade-marks Journal advising that, "[e]ffective immediately, the Registrar will generally no longer require an applicant for registration of a trade-mark to enter disclaimers pursuant to Section 35 of the Trade-marks Act. Voluntary disclaimers will continue to be accepted."
The word "generally" was used to allow the Registrar to continue to require a disclaimer of the 11 point maple leaf of the Canadian flag pursuant to Order in Council PC 1965, 1623 paragraph 5(b).
Apart from the 11 point maple leaf, applicants can expect no longer to be required to disclaim portions of trade-marks for any reason.
Applications will continue to be examined and will be objected to by Examiners, inter alia, if the mark is considered to be, in its entirety, primarily merely a name or surname pursuant to section 12(1)(a) of the Act; clearly descriptive or deceptively misdescriptive pursuant to section 12(1)(b) of the Act; or the name of the wares or services in any language pursuant to section 12(1)(c) of the Act.
The tests for registrability pursuant to sections 12(1)(a), (b) and (c) remain the same. If an application would have been approved for advertisement prior to the new Practice Notice with a disclaimer or disclaimers, it should now be approved for advertisement without a disclaimer or disclaimers. Examiners are not expected to identify portions of marks that would have been proper subject matter for disclaimers prior to the publication of the Practice Notice.
Further to the decision of the Federal Court in Best Canadian Motor Inns Ltd. v. Best Western International, Inc. (2004), 30 C.P.R. (4th) 481, Examiners will continue to consider that composite marks containing word and design components are not registrable pursuant to section 12(1)(b) of the Act as clearly descriptive when sounded, if the word component is either clearly descriptive or deceptively misdescriptive pursuant to section 12(1)(b) of the Act and is the dominant feature of the mark. When the word element is not considered to be the dominant feature of the mark, the Registrar considers that the mark in its totality is not, when sounded, either clearly descriptive or deceptively misdescriptive within the ambit of section 12(1)(b) of the Act and the mark is considered registrable.
It has been held that a disclaimer has no effect on the assessment of whether marks are confusing (see, for example, Standard Coil Products (Canada) Ltd. v. Standard Radio Corp and Registrar of Trade-marks (1971), 1 C.P.R. (2d) 155). However, in practice, it has been considered preferable to avoid disclaimers whenever possible and consideration could be given to whether there might be any real benefit to withdrawing a disclaimer in any particular case, even though the fact that a disclaimer was provided would be apparent to anyone viewing the Trade-marks Office file. Please contact your Gowlings professional should you wish to discuss whether it might be worthwhile to withdraw a disclaimer in any particular case.
The Trade-marks Office is currently considering whether it should be accepting requests to withdraw disclaimers in the case of applications that have already been advertised in the Trade-marks Journal. Once an application has proceeded to registration, the Trade-marks Office will not permit the withdrawal of a disclaimer.
As provided in the Practice Notice, voluntary disclaimers will continue to be accepted and may be useful in contentious matters.
In general, applications are expected to move faster through the examination process as a result of the new Practice Notice, since Examiners will not be issuing Office Actions when a disclaimer requirement would have been the only issue raised. In such cases, the application will be approved for advertisement in the Trade-marks Journal.