Prohibited marks

Subsection 9(1) of the Trade-marks Act lists various kinds of marks that are expressly prohibited. You may not register a trade-mark that resembles certain official symbols unless you have the consent of the authority in question.

These official symbols include:

• official government symbols, e.g., the Canadian flag;
• coats of arms of the Royal Family;
• badges and crests of the Armed Forces and the letters R.C.M.P.;
• emblems and names of the Red Cross, the Red Crescent, the United Nations;
• armorial bearings, flags and symbols of other countries; and
• symbols of provinces, municipalities and public institutions.

These prohibitions are designed to prevent people from "cashing in" on the prestige and authority of the above-mentioned institutions and misleading the public.

Subsection 9(1) of the Trade-marks Act also prohibits subject matter that is obscene, scandalous or immoral. For example, your trademark may not include profane language, obscene visuals or racial slurs.

Another prohibition covers the use of portraits or signatures of living persons or persons who have died within the preceding 30 years. For example, using the photo of an existing rock group to promote your record store would be prohibited unless you had formal consent to do so.

Further prohibitions

A trade-mark will not be registered if it consists of a plant variety denomination or is a mark so nearly resembling a plant variety denomination as to be likely to be mistaken therefor, and the application covers the plant variety or another plant variety of the same species.

A trade-mark will not be registered if it is, in whole or in part, a protected geographical indication for wines or spirits, and the application covers a wine or spirit not originating in the territory indicated by the geographical indication.

The preliminary search

The Trade-marks Office The Trade-marks Office maintains a public electronic inventory of all registered trade-marks and pending applications at its premises in Gatineau, Quebec. Before you apply for trademark registration, you or your agent should conduct a thorough search of the electronic register and the Trade-marks database to see if your trade-mark could be confused with someone else's.

While not mandatory, it is a good idea for two reasons:

• It is a form of pre-screening. It will help you determine whether your application has a chance for success, or whether it would be a waste of time and money to try to register it in its present form. For example, your search may turn up a registered trade-mark "Southpole" for frozen water products, hence you would have trouble registering "Northpole" for your ice cream. You might, at this stage, want to consider modifying your trademark to add or adopt more original words or artwork.
• A search can help you avoid trade-mark infringement and potential lawsuits.

The search room in the Client Service Centre, in Gatineau, is open to the public, free of charge, from 8:30 a.m. to 4:30 p.m., Eastern Time, Monday through Friday, except on legal holidays, at: Place du Portage I 50 Victoria Street 2nd Floor Gatineau, Quebec K1A 0C9

You may personally visit the Trade-marks Office, or you may consult one of the companies licensed to use the electronic database, or hire a freelance trade-mark searcher or a trade-mark agent to do the research job on your behalf.

The Trade-marks Office electronic inventory contains listings of registered and pending applications. The electronic indices cover word marks, slogans, numbers, pictures and combinations of these. As soon as your application is received, it too becomes part of the public record and is subject to inspection by the public.

To conduct a proper search, you will have to check for various possible versions of the mark. In the case of a word mark, you should look for all conceivable spellings. For example, if your trade-mark is "Northpole" you search for "North," "Nord" and "Pole".

Also in the Office records are samples of crests, badges and official symbols that fall into the category "Prohibited Marks," under subsection 9(1) of the Trade-marks Act. These samples can help you verify that your trade-mark does not fall into a prohibited category.

You should allow at least half a day to conduct your search. An information officer in the Client Service Centre will be pleased to explain how to access the electronic register and to provide you with general information about the Trade-marks Act and Regulations. It is important to note that, the Trade-marks Office cannot conduct the search for you, or advise you on whether your mark is registrable. Registrability of the trademark
will be determined in the examination process of the trade-mark application.

Trade names

Consider also having a search of trade names done before you go any further. Trade names are often also used as trade-marks, even if they are not registered as such. Southpole Inc. may never have filed for trade-mark registration, but if the name "Southpole" is known for frozen water products, the company could argue ownership of the word as a trade name, as well as a trademark. Southpole Inc. could not prevent you from filing your "Northpole" application. The Trademarks Office would not have "Southpole" on its trade-mark records, because trade names are not registered with it.

However, Southpole Inc. could easily find out about your application, either by doing a search of the Trade-marks Office records or when your application is published in the Trade-marks Journal. It may then challenge your application during the stage called "Opposition."

As trade names may be recorded separately in each province under provincial legislation, there is no complete central inventory containing all current names, although through NUANS you can access a data-base of registered corporate names. This search is therefore quite complex and you are advised to hire a trade-mark agent to do the job for you.

You can view Trademark Filing Packages and Prices here
Trademark Search is available here for only $39.95
Trademark Registration is available here

Check your e-mail tomorrow for Part 6 of the
Guide to Canadian Trademarks.