Michelle Wassenaar, Method Law Professional Corporation (Canada)
Steven Wake, Forresters (United Kingdom)
Patricia Olosky, The Webb Law Firm (United States)
Introduction
Trademark lawyers from Canada, the UK and the US herein provide advice on dealing with prevalent trademark prosecution issues, namely, distinctiveness, descriptiveness, use, goods/services descriptions, bad faith, and speed/quality of examination. There are differences, similarities, disadvantages, and advantages between these jurisdictions. Although the respective Trademarks Offices are rather patient with non-represented applicants, the Offices are not permitted to provide advice. Expert advice provides the best chance at navigating a trademark application through clearance, filing, prosecution, and any opposition, to registration.
The backdrop to the comments below is the governing law in each jurisdiction. The trademark examination process in Canada is governed by the Canadian Trademarks Act, the Trademark Regulations, court decisions (mostly from the Federal Court and Federal Court of Appeal) and Trademark Opposition Board decisions. The Trademarks Office provides guidance through the Trademarks Examination Manual, a searchable pre-approved (aka acceptable) online Goods and Services database, and Practice Notices.
The trade mark examination process in the United Kingdom is regulated by the UK Trade Marks Act, the associated rules, and by applicable case law. The applicable case law includes decisions of the UK Courts and, under the terms of the UK Brexit Withdrawal Agreement, also those of the Court of Justice of the European Union (up to the point at which the UK left the EU in 2020). Most of the significant points of practice under UK trade mark examination derive from EU Court decisions.
The trademark examination process in the United States is governed by the Trademark Act of 1946 (the Lanham Act) that forms Chapter 22 of Title 15 of the United States Code, Title 37 of the Code of Federal Regulations, Federal court decisions (including from the Supreme Court of the United States and the Court of Appeals for the Federal Circuit). The United States Trademark Office provides examination and practice guidance through the Trademark Manual of Examination Procedure (the TMEP), the Acceptable Identification of Goods and Services Manual Examination Manual, and orders, notices, circulars of information, instructions, and examination guides.
Distinctiveness – Canada
On June 17, 2019, the Canadian Trademarks Act was amended in significant respects. One change was an addition to the Act which gave the Registrar the authority to refuse a trademark application if the Registrar is satisfied that the trademark is not distinctive.[1]
The Canadian Trademarks Examination Manual commences its chapter on “Examination of the Trademark” as follows:
4.1 Purpose of examination
A formal review of the application serves to establish its registrability under the Trademarks Act.
Upon receiving the application, examiners will carefully review its contents, giving particular consideration to the following:
- Is the subject matter a trademark as defined in section 2?
- Is the trademark registrable under section 12?
- If the trademark is not registrable pursuant to paragraph 12(1)(a) or (b), is it registrable on proof of acquired distinctiveness?
- If the trademark is not inherently distinctive, is it registrable on proof of acquired distinctiveness?
This authority to refuse a trademark application if the Registrar is satisfied that the trademark is not distinctive resulted in significant examiner objections of non-distinctiveness, which is typically combined with a descriptive/misdescriptive or surname objection. Section 4.9.5 of the Trademarks Examination Manual provides a non-exhaustive list of examples of marks “that would, generally, be considered to have no inherent distinctiveness”.
The Act was amended to comply with obligations under international agreements and to harmonise Canada’s trademark regime with the global trademark community and as such it would be expected that trademarks found registrable in other jurisdictions should be registrable in Canada. However, merely responding to a distinctiveness objection by providing copies of corresponding registrations from various foreign countries is insufficient to overcome such objections without also providing persuasive arguments that a mark is distinctive. Also, the fact that similar types of marks may be found registered on the Canadian Trademarks database is not persuasive unless these registrations were approved after the Act was amended. In any event, the Office has long held that they are not bound by prior approvals. It takes significant evidence of a pattern of prior approvals to convince an examiner that they are not being consistent with accepted Trademarks Office practice. Internet research and trademark searches are helpful to support arguments of a mark’s distinctiveness (for example if a mark is not being used by competitors or generically), as are references to similar examples from the Trademarks Examination Manual, and case law.
To overcome an examiner’s distinctiveness objection[2] on the basis that a mark acquired distinctiveness through use of the mark, the evidence must be significant and compelling, and such acquired distinctiveness must have occurred by the filing date of a trademark application (not the date of a response to an examiner’s objection).
Based on our own research we determined that in 2020, of the 20,668 trademarks that were approved and advertised by the Trademarks Office, only 27 included evidence of use that was deemed acceptable for establishing acquired distinctiveness. Only 12 of those 27 trademarks were not territorially restricted to a select number of provinces, and 10 of those 27 trademarks were territorially restricted to only one province. Further, 2 of those 27 trademark applications were subsequently withdrawn from advertisement on the basis that they were approved in error.
Recently, Mr. Justice Southcott of the Federal Court assessed whether an unregistered mark that was a geographic location had acquired distinctiveness and found that sales volume and use alone does not render a mark distinctive.
In summary, the evidence adduced is not sufficient for Hidden Bench to surmount the heavy onus it bears to establish that, from the perspective of the consumer, its descriptive marks have acquired a secondary meaning so as to make them distinctive of Hidden Bench’s goods and services. As noted earlier in these Reasons, acquired distinctiveness is only one of several factors that courts have considered in determining the existence of reputation or goodwill for the purposes of a passing off action. However, in assessing Hidden Bench’s acquired distinctiveness arguments, I have also considered and rejected as insufficient its evidence on other factors such as length of use, volume of sales, and extent and duration of advertising and marketing. On the facts of this application, where the passing off claim relies on use of unregistered descriptive marks, Hidden Bench’s failure to show acquired distinctiveness results in inability to establish the goodwill necessary to succeed in its claim under s 7(b) of the Act.[3]
Distinctiveness – United Kingdom
The test for distinctiveness of a mark is an assessment of whether the mark is capable of performing the function of identifying the goods or services as being from one undertaking as opposed to any other undertaking.
A mark which is descriptive is automatically regarded as lacking distinctiveness in the UK. It is quite often clear whether or not a mark is descriptive and lacks distinctiveness. Things become more difficult when an examiner objects that a mark is lacking distinctiveness even though it is not seen as descriptive. What sort of marks are we talking about? Examiners will often object on the grounds of distinctiveness when a mark could be regarded as being laudatory or promotional. For example, the UKIPO practice manual mentions the slogan “The best that money can buy”. Descriptive prefixes and common “positive” terms such as pro, plus, super, premium, medi, multi, mini, eco, green and mega are all given as examples of terms which would not be seen as distinctive in the relevant context.
Other marks which often attract objection on the grounds of lack of distinctiveness would include slogans (despite case law to say that they should be examined no differently to any other mark), single letters without any significant styling, very simple figurative or geometric shape marks, figurative marks where the image may have relevance in relation to the goods such as vine leaves for wine or an image of a cow for dairy products. Simple label outlines or borders also tend to be regarded as non-distinctive.
Under current UKIPO practice there is also a tendency for objection to be raised on the grounds of lack of distinctiveness in respect of applications that are for marks which would be what I refer to as non-traditional marks such as shape marks, position marks, patterns, colour per se, sound marks, motion marks etc. Examiners will often raise objection on the grounds that consumers are not accustomed to recognising such marks as denoting origin and that on that ground the mark is not distinctive in the absence of use to educate consumers to recognise them as marks denoting origin. Think Burberry pattern.
If you have a mark which might fall into any of the categories mentioned, then it is worth considering carefully the exact form of the mark which should be filed. If there has been appreciable use of the mark, then file for the mark in the form in which it has been used. Then if an objection is raised on the grounds of lack of distinctiveness it is possible to file evidence of distinctiveness acquired through use. Otherwise, it can be very difficult to overcome an objection on the grounds of lack of distinctiveness due to the fact that it is often a subjective assessment on the part of the Examiner. For all cases other than clear-cut no hope cases it is worth submitting a round of arguments to try and persuade an examiner that a mark is distinctive. The inconsistency in respect of examination makes this worthwhile. Also, an applicant is always entitled to ask for a Hearing in respect of any application which has attracted objection. At the UKIPO a Hearing is a relatively informal procedure. It is usually conducted by telephone and will result in an application being considered by a more senior examiner or Hearing Officer. A fresh pair of eyes may have a different view as to the distinctiveness of a mark. Note, however, that a Hearing is meant to finalise the outcome of an application, one way or another.
A further option for trying to obtain a registration of a mark which may be regarded as non-distinctive is to consider seeking registration for the mark in combination with an additional distinctive element. As long as part of a mark is considered distinctive, then the mark as a whole should be acceptable, always assuming that the distinctive part is not insignificant in the overall mark. Disclaimers are no longer required in respect of a part of a mark which may not be considered distinctive. Thus, the mark as a whole will be entered on the register even where the mark contains a non-distinctive element. This can act as a useful deterrent and leave third parties wondering whether the registration gives any rights in the non-distinctive element.
Under current practice in the UK, surnames and place names are acceptable for registration without question, unless a place name is particularly well-known as the source for particular products or services.
Distinctiveness – United States
A mark that lacks any distinctiveness is deemed generic and incapable of distinguishing the goods and services from those of others. Similar to the Canadian and U.K. standards, generic “marks” are those that the public would understand to primarily be the common name for the offerings, such as the mark DOG BED for “dog bed” goods. Wording that is generic is the antithesis of a trademark, the ultimate in descriptiveness, and cannot be registered on either of the Principal or Supplemental Registers. Intentional misspellings, disclaimers, and/or claims of acquired distinctiveness will not provide for registrability of generic wording standing alone.[4]
If an applicant is determined to register wording that will most likely be deemed generic, seeking protection for the wording in highly stylized form and/or with a design component is recommended. That way, while the wording itself will need to be disclaimed apart from the mark in its entirety, at least some protection for the entire mark may be secured, albeit limited in scope.
Descriptiveness – Canada
Although the Canadian Trademarks Act was not changed with respect to the prohibition on registering clearly descriptive marks under section 12(1)(b) of the Act, clearly descriptive and deceptively misdescriptive objections seems to be increasingly raised against trademark applications. Section 12(1)(b) of the Act states that a trademark is registrable if it is not “whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin”.
Marks that are descriptive or suggestive may be registrable if they are not clearly descriptive. The line between a descriptive mark and a clearly descriptive mark has been elucidated by case law, and the Federal Court and Trademarks Opposition Board are still assisted by Mr. Justice Collier from a 1978 decision in which he said:
The decision that a mark is clearly descriptive is one of immediate impression; it must not be based on research into the meaning of words.[5]
Trademarks comprising a geographical location are either clearly descriptive because they indicate where the goods/services are from or are deceptively misdescriptive if the goods/services do not come from that location. The examiner will ask the applicant if the goods/services are from the geographical location in the mark, and if not, the mark is deceptively misdescriptive even if the geographical location is only a part of the mark. A misdescriptiveness objection can be overcome for a mark for which it would be self-evident that the goods/services could not emanate from that location, such as, the example from the Trademarks Examination Manual of the mark NORTH POLE for banana goods, since that mark is not deceptively misdescriptive. In other words, a consumer would not be misled to believe that the goods come from that location.
Responding to a clearly descriptive objection against a mark that is, or contains, a geographic location on the basis that the location is obscure, insignificant, or generally unknown to Canadians is not persuasive. The mark at issue in Hidden Bench Vineyards & Winery Inc. v. Locust Lane Estate Winery Corp. was an insignificant short lane called Locust Lane.
I also find that Hidden Bench’s argument conflicts with the guidance of the Federal Court of Appeal in MC Imports Inc v AFOD Ltd, 2016 FCA 60 [MC Imports]. In that case, the Court indicated that the perspective of the consumer is only meaningfully relevant to the determination of inherent distinctiveness of a descriptive mark if there is ambiguity as to whether the mark actually refers to a place (at para 63). In the present case, there is no such ambiguity. As explained in MC Imports, the policy underlying the treatment of descriptions of places of origin is that maintaining a monopoly over the use of words to describe the origin of goods would unduly deprive potential competitors of the opportunity to describe their own goods in the same manner (see para 44). In my view, this policy applies regardless of how well the place of origin is known.[6]
Unlike the United States, there is no supplemental Register for clearly descriptive marks in Canada, and if arguments against an examiner’s clearly descriptive/deceptively misdescriptive objection are not successful, it may be possible to succeed on the basis that the mark has acquired distinctiveness, as discussed above in the section on distinctiveness.
If an examiner considers a trademark to be clearly descriptive or deceptively misdescriptive for only certain goods or services in an application, those goods or services may be deleted to obtain a registration for the remaining goods/services. Alternatively, the application may be split so that a registration issues for the non-objected to goods/services, and a separate application with the remaining goods/services can continue to be prosecuted.
Descriptiveness – United Kingdom
Under the UK Trade Marks Act a mark shall not be registered if it consists “exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographic origin, the time of production of goods or of rendering services, or other characteristics of goods and services”. As you will appreciate this is a fairly wide ranging exclusion intended to prevent the registration of any mark which is descriptive of the goods or services or any characteristics of them.
The relevant test for descriptiveness is whether the mark has a meaning that can be immediately perceived by the relevant consumer. The meaning must be direct and specific and must be one which would be appreciated by the relevant consumer without the need to engage in further reflection or consideration.
A descriptiveness objection should not apply to terms which are only suggestive or allusive and which are not directly descriptive of the goods or services or characteristics of them.
The Examiner should give basis for an objection on the grounds of descriptiveness. This will typically be by referencing dictionary definitions of words in a mark. It may also be by referencing websites which make use of the term, particularly for newly coined terms. If an Examiner fails to substantiate an objection by way of appropriate references then that gives good basis to argue that the objection is not justified. However, UK examiners will then typically issue a second examination report providing the necessary supporting grounds for the objection.
Examiners will often raise a blanket objection across all of the goods or services in an application when they raise an objection on the grounds of descriptiveness. It is worth considering whether the objection really applies across all of the goods and services. Examiners are meant to consider objections in respect of each item of the goods and services covered but rarely do so. It will often be self-evident that a descriptiveness objection applies to all goods and services but there are a good number of cases where a response can be filed pointing to certain goods or services for which the objection would not apply.
As touched upon earlier, it is often worth filing a round of arguments to try and overcome an objection on the grounds of distinctiveness particularly if the case might be border-line or it can be argued that a mark is not directly descriptive but only suggestive or allusive in respect of the goods and services. Again, as mentioned before, requesting a Hearing can be a strategy which might secure acceptance of a mark when it is looked at by a different, more senior examiner. There is always the option of filing evidence of distinctiveness acquired through use in order to overcome an objection that a mark is considered descriptive and non-distinctive.
Unfortunately, comparable marks already on the UKIPO register are rarely persuasive, but it is still worth mentioning them, particularly if there are several.
When assessing descriptiveness of a multi-word mark examiners are meant to consider the mark as a whole and from the viewpoint of the relevant consumer. They are often in the habit of looking at the dictionary definitions for each of the individual words and then seeking to combine them to arrive at a descriptive meaning which would not be obvious to the relevant consumer. There is basis to argue against such an objection if the combination of words does not follow normal rules of grammar or would not immediately convey a relevant descriptive meaning.
Misspellings of descriptive words will be treated as equivalent to those descriptive words unless the misspelling results in a mark which is particularly striking or unusual.
Consideration should be given to filing descriptive terms in combination with another distinctive element, be it a word or a figurative element.
The UK no longer has any equivalent of the US Supplemental Register and so it is very much all or nothing when trying to overcome an objection in relation to descriptiveness (and consequently lack of distinctiveness).
Descriptiveness – United States
A mark is deemed merely descriptive, and will be refused registration on the Principal Register, if it describes at least one of an ingredient, quality, characteristic, function, feature, purpose, or use of at least one of the applied-for goods or services. The determination is made in relation to the sought offerings for the mark, requiring consideration of the context of use of the mark and the significance of the mark to the average purchaser of the offerings. [7]
The determination of descriptiveness is subjective and arguments can be presented that the mark at least rises to the level of being suggestive if imagination, thought, or perception is needed in order to reach a conclusion as to the nature of the offerings therewith.[8] Alternatively, the applicant can assert that the mark has acquired distinctiveness or “secondary meaning” in that the primary significance of the mark to the relevant consumer is the producer and not the offerings. A claim of acquired distinctiveness can be supported by: 1) claiming ownership of at least one, active prior registration on the Principal Register of the same mark for sufficiently similar offerings to those in the application at issue; 2) a verified statement that the mark has become distinctive of the offerings by virtue of the applicant’s substantially exclusive and continuous use of the mark in commerce for at least five years before the date on which the claim of distinctiveness is made; 3) submitting actual evidence to prove that the mark distinguishes the offerings of the applicant, such as affidavits/declarations that show the duration, extent, and nature of the applicant’s use of the mark in commerce, advertising expenditures for use of the mark, and supportive submissions from relevant consumers.[9]
If arguments and/or an acquired distinctiveness claim are not successful and a final refusal has been issued, the applicant may wish to amend the application to seek protection on the Supplemental Register. To do so, acceptable use of the mark must have been/be submitted or, if applicable, a non-U.S. applicant can support registration of the mark on the basis of its home registration for the same mark for the same offerings as the U.S. application.[10] It is important to note that a Madrid-based U.S. designation application is not eligible for registration on the Supplemental Register.[11]
Intent to Use and Evidence of Use – Canada
After the 2019 amendment to the Canadian Trademarks Act, it is no longer a requirement in Canada to provide a basis of use, proposed use or use and registration abroad in a trademark application. The Act still requires either use or an intent to use: “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.[12]
It is also no longer a condition for registration to declare that use of the mark has commenced in Canada. This means that practitioners no longer must explain the nuances of “use” to their clients before filing an application or registering a mark.
The Canadian Trademarks Act circularly defines “use” as “use, in relation to a trademark, means any use that by section 4 is deemed to be a use in association with goods or services”. Section 4 states:
4 (1) A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
Idem
(2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
Use by export
(3) A trademark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods.
Failure to use a registered trademark may result in invalidation of a registration that is at least three years old. A registration may be challenged for non-use in the Federal Court pursuant to Section 57(1) of the Act or as a defence to trademark infringement, and also may be challenged in a summary proceeding before the Registrar, known as a Section 45 proceeding (named after the section of the Act). For a Section 45 proceeding, the relevant period in which to show evidence of use (or an extraordinary reason to excuse non-use) is the three-year period before the date that the Trademarks Office issues a Section 45 Notice (after receiving a request to do so). Strangely, the Section 45 proceedings name the initiator of the request, which is usually a law firm or trademark agency, rather than the client or an interested party. The Registrar of Trademarks may also initiate a Section 45 Proceeding of its own volition, but the author has never encountered this scenario. Extensive evidence of use is not required in a Section 45 proceeding since it is designed for getting rid of “deadwood”, i.e. trademarks not in use. Given that use is no longer a requirement for registration, some trademark practitioners are concerned that there may be a pile up of deadwood trademark registrations rising in the Register.
Intent to Use and Evidence of Use – United Kingdom
Under UK trade mark law and practice use of a mark is not required in order to secure registration or to maintain a registration. This is in stark contrast to the provisions of the US.
That said, there is a requirement at the time of filing of an application for the applicant to have an intention to use the mark or for it to be used with the applicant’s consent.
Historically this requirement for an intention to use the mark has received little attention. The UKIPO Examiner may raise objection in relation to this point if an application seeks protection across all classes of the Nice Classification or for a very broad range of goods across a very large number of those classes. Such an objection can be overcome by simply confirming an intention to use.
More recently the issue of whether an applicant has acted in bad faith by seeking registration across a broad range of goods or services which bear little or no relation to the known business of the applicant has been considered. I will come to this under the bad faith section.
A mark which has been on the register for five years or more can be challenged on the grounds of non-use. When relying upon a registration which has been in place for more than five years in opposition or invalidation proceedings, the owner will normally be required to prove use of the registration in the preceding five years period. That use must be use of the mark in the form exactly as registered, or with variations which do not alter the distinctive character of the mark, and must be for the goods or services in respect of which the mark is registered. Parties will often encounter difficulty in proving such use, not because there has been no use, but because clients are renowned for not keeping good records and for being unable to properly substantiate the use. Dated invoices showing the mark and identifying the goods and the location of the recipient are the “golden nugget”.
In the recent UK and EU cases involving Sky and SkyKick, the issue of intention to use a mark was fully addressed and it was held, inter-alia, that filing an application with no intention whatsoever to use a mark for goods or services listed may constitute bad faith. More of that later. Interestingly the EU legislation does not even have a requirement for an intent to use a mark.
Intent to Use and Evidence of Use – United States
For a U.S. trademark application relying solely on an intent-use-basis, a registration will not be granted unless an acceptable allegation of use is filed.[13] This requirement does reduce the number of application filings by at least U.S.-based trademark trolls. However, they still occur and can clog up the register until such applications go abandoned for failure to proceed an application to allowance or prove use. For non-U.S. applicants, the use requirement can be circumvented by perfecting a foreign registration basis.[14]
After application allowance, an applicant has six (6) months to file an acceptable Statement of Use (SOU) with a specimen and dates of use anywhere in the word and in/into U.S. commerce for each international class of goods and/or services that they wish to maintain in an application.[15] If the initial deadline cannot be met, five (5) six-month extensions of time are available for a government fee of $125.00 US per class.[16]
For goods, a specimen must show the mark placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale (ex. instruction manuals, but not invoices/bills of lading). For services, a specimen must show the mark used or displayed in the sale or advertising of services.[17]
Some applicants will want to rush to the filing of a SOU because they are anxious to receive a registration or wish to avoid payment of the government extension fees. Scrutiny of acceptable specimens has heightened in recent years. Thus, extreme care must be taken when filing a SOU because the premature filing of a SOU can result in partial or total abandonment of an application if the specimen(s) are refused and the applicant cannot submit a substitute specimen(s) that was in use in commerce before the expiration of the existing deadline for filing the SOU.[18]
There are a few strategies to prevent abandonment based on an unacceptable SOU:
- If time allows, ask the Examining Attorney to conduct a courtesy review of proposed specimen(s). Most Examining Attorneys are more than happy to do so. It is recommended to call the Examining Attorney first to see if they will conduct such a review and, if so, the proposed specimens are sent directly to the Examining Attorney’s email address – not formally filed. The email is not considered the filing of a SOU and no government fees are involved. The Examining Attorney will review the proposed specimen(s) and advise on acceptability rather quickly (typically, within a week). If the proposed specimen(s) is not acceptable, the Examining Attorney will explain the deficiencies, so the client has time to correct them or gather an alternative specimen(s) before the filing of the SOU.
- File the SOU early in the current six-month SOU time period. That way, if a specimen refusal is encountered, a substitute specimen(s) can be submitted. However, they must have been used in commerce before the expiration of the current SOU time period and new dates of use must be submitted, if applicable.[19]
- File an “insurance” extension of time request with or after the filing of the SOU to obtain an additional time to submit a substitute specimen(s). It is important to note that such an insurance extension is only permitted once – no more extension requests will be granted.[20] The best way to maximize an insurance extension request is to file an extension request on the last day of the existing SOU time period and then file the SOU on the next day – the first day of the “new” SOU time period. If the SOU is refused, the applicant can then file an insurance extension request before the end of the “new” SOU time period. This has the effect of providing almost one year to correct any specimen deficiencies.[21]
Educating and working with the applicant to secure acceptable proof(s) of use is very important at this fragile stage. It is worth any additional professional and government fees for extensions to ensure the acceptability of a SOU.
Goods/services descriptions – Canada
Section 30(2)(a) of the Act states that an application shall contain “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”.
Using the pre-approved goods/services established by the Trademarks Office avoids receiving an objection that the goods/services are not in ordinary specific terms. While preparing an online trademark application, it is possible to search for and export pre-approved goods/services into the application.
Canada adopted the Nice classification when the Trademarks Act was amended in 2019, and since September 2015 allowed voluntary Nice classification in new applications. However, rather than reducing the number of objections against goods/services descriptions (since there is an accompanying Nice classification to also define the scope), such objections have ramped up and are extremely detail oriented. Trademark examiners are helpful when called regarding acceptable descriptions, but that may not be practical when there are a great many objections to goods/services descriptions in one application.
Since registrations did not require Nice classification before the Act was amended, renewal requires classification of the goods/services (and corresponding payment per class). Failure to classify goods/services upon receipt of a Notice from the Trademarks Office will result in the registration being expunged.
Goods/services description – United Kingdom
A UK application must list the goods and services for which protection is sought in accordance with the Nice Classification grouped by classes and identified by class number. Applicants are free to use whatever terminology they wish but the goods and services must be clear and precise.
The UKIPO database of acceptable goods and services is not as fully populated as that used by the EUIPO and it is generally preferable to use the EUIPO resource to identify acceptable wording for goods and services. The database is known as TMclass, accessible at www.tmclass.tmdn.org.
In recent times examiners seem to be paying greater attention to grammatical accuracy of lists of goods and services and it is therefore worth checking, at the time of filing, that goods and services are listed correctly in order to try and avoid an unnecessary office action. If an office action does issue in relation to the wording of the goods and services examiners will often make suggestions as to amendments which would be acceptable. Such proposals for amendment should be checked carefully because they are not always entirely appropriate. If terms are incorrectly classified (inadvertently or deliberately) then it is generally permissible to add further classes and transfer items or delete them. However, adding further goods or services is not permitted.
In contrast to the position in the US, the use of broad terms in lists of goods and services is acceptable in the UK. This point was recently tested, again in the case of Sky v SkyKick.
When Sky brought infringement proceedings against Skykick based on registrations that covered broad terms, such as computer software and telecommunications services, Skykick filed various counterclaims, one of which was for invalidity of the registrations on the grounds that these wide terms were not sufficiently clear and precise to allow the scope of protection to be understood. Such terms cover a very wide range of products and services. In short the counterclaim was rejected and it was confirmed that the use of broad terminology is not a ground for invalidity of a registration. The case ran over several years, moving between the UK Court, the Court of Justice of the European Union, and back to the UK High Court and Court of Appeal. That fairly protracted period left many trade mark owners and practitioners wondering whether it was acceptable to use broad terms or whether this might constitute a ground for invalidity, not just for those particular goods but for the registration as a whole. Thankfully the matter has been concluded and we are now back in the position of being free to use broad terms in lists of goods and services. It should however be noted that once a mark has been registered for five years it can be challenged on the grounds of non-use and a registration covering, for example, computer software, which has only been used for, say, accountancy software, is most likely to be restricted to the specific goods for which use has been shown. While the discussion around this issue has focused on the wording “computer software”, we see many registrations for broad goods in the UK. Thus, terminology such as “clothing, footwear and headgear” in class 25 is commonly adopted.
I am aware of the requirement for precision in the listing of goods and services in US applications, due to the requirement to prove use of a mark. We see many applications coming to the UK for equivalent narrow wording. I recommend that when seeking registration in the UK practitioners consider whether they could usefully broaden the goods and services to obtain wider protection. While unduly broad wording is best avoided, we often find wording which is slightly broader than that adopted in the USA would be perfectly acceptable and justifiable. Remember there is no requirement to demonstrate use of a mark in order to secure registration or maintain a registration in the UK.
Goods/services descriptions – United States
The application must identify the goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce and must be specific, definite, clear, accurate, and concise.[22] While not exhaustive, using applicable listings from the Acceptable Identification of Goods and Services Manual (ID Manual) that is maintained in electronic form by the USPTO can greatly assist with this endeavor. The ID Manual has listings of acceptable identifications of goods and services that are properly classified in accordance with the current edition of the Nice Classification. Application filing fees can be reduced by $100.00 US per international class if all of the listings of goods and/or services are selected from the ID Manual.[23]
Using language for goods and/or services that has been accepted in prior application(s) or registration(s) by the applicant or third parties is another method for providing acceptable language in an application. That said, using such language is not always controlling because the question of acceptability of the identification/classification of goods and/or services is determined as of the application filing date.[24]
During prosecution of an application, Examining Attorneys are generally very helpful in providing suggestions and guidance for amending an application to overcome unacceptability issues. When the acceptability of language is unclear, informally working with the Examining Attorney via email or the phone to go over proposed language can provide rather solid assurance that amendments submitted in response to an Office Action will be acceptable (subject to pre-publication review).
Bad faith – Canada
Opposition proceedings commonly include an allegation of bad faith, but to date this seems to require exceptional circumstances. The amended Canadian Trademarks Act provides a specific ground of opposition, namely that an application was filed in bad faith.[25] Formerly a bad faith allegation could be raised in an opposition based on section 30(i) of the Act which required that an applicant was “satisfied” that they were entitled to use the mark in Canada. The amended Act now 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”.[26] As such, if the applicant did not intend to use or knew that they were not entitled to use a mark, that would be filing an application in bad faith. Proving the intent of an applicant is very difficult except in egregious cases.
The amended Act maintained the provision that the registration of a trademark is invalid if the application for registration was filed in bad faith.[27]
In Norsteel Building Systems Ltd. v. Toti Holdings Inc. the Federal Court considered the bad faith standard in the context of an attempt to invalidate a registration that was filed under the previous “satisfied” standard.[28]
Here, there is no evidence offered by Toti Holdings of what, if any, steps it took regarding Systems before it asserted that it was “entitled to use the trade-mark in Canada in association with its goods and services.”
It is fair to say that Toti Holdings was, at best, wilfully blind as to whether it had the right to make the application in the face of its competitor Systems; however, I cannot say that a failure to make the obvious inquiries amounts to bad faith.[29]
It is generally difficult to prove that a registrant had knowledge of prior use of another mark as of the filing date of its application, and in the above decision the Court did not require that a registrant provide a basis for its belief that it was entitled to use a mark.
Bad faith – United Kingdom
The UK Trade Marks Act contains a provision which prohibits the registration of a mark where it is considered the application has been made in bad faith. Bad faith also constitutes a ground of opposition or invalidity in the UK.
At the application stage it is extremely rare for an examiner to raise an objection on the grounds of bad faith. This would normally occur only where it appears obvious that the mark does not belong to the applicant. For example, the UKIPO examination guidelines cite the case of the name of a famous person being filed as a trade mark and where the applicant is clearly not that person or obviously linked to that person. The UKIPO would seek clarification of the applicant’s entitlement to register the mark.
Under current trade mark examination practice in the UK, an examiner will not reject an application on the grounds of conflict with an earlier mark. The examiner will draw attention to such earlier marks in the examination report and will send notification of the later application to the owner of the earlier rights when the application is published. It will be appreciated therefore that applicants may seek registration for a mark which clearly belongs to a third party even if the third party owns a prior registration. It will then be necessary for the owner of the earlier rights to file opposition and at that stage, if appropriate, a claim of bad faith can be filed.
The bad faith hurdle is set very high at the UKIPO. While there is no clearly defined meaning for what constitutes bad faith, various cases have made clear that a claim of bad faith is seen as a very serious accusation by the UKIPO and must be backed up by solid evidence. A mere assertion that an applicant should have known about a third party mark will not be sufficient. The Courts have referred to bad faith as requiring dishonesty or involving conduct which falls short of acceptable commercial behaviour. It is rare that bad faith alone will form a claim in a trade mark proceeding at the UKIPO.
A previous relationship between the parties will often assist in proving bad faith as will any evidence that the party accused had clear knowledge of the mark involved.
One area where the concept of bad faith has arisen in recent years is that which is known as “evergreening”. This is a practice under which trade mark owners make repeat filings for the same mark at five year intervals in order to avoid the requirement to prove use of a mark when relying upon it in opposition or invalidity proceedings and in order to always have a registration which cannot be challenged for non-use. There have been decisions from the EUIPO which indicate that an identical refiling may constitute bad faith. This has resulted in practitioners simply refiling for a slightly modified list of goods or services. In the Hasbro case at the EUIPO a registration which was a repeat filing with additional goods was held invalid on the grounds of bad faith for those goods which replicated a prior registration but not for the goods which were newly added.
Another area where the issue of bad faith has been tested recently is in respect of the lack of intention to use a mark at the time of filing as touched on above. This was again an issue considered in the case of Sky v SkyKick. While the use of a broad specification of itself will not be considered to constitute bad faith, if the applicant has no genuine intention to use the mark for some of the goods and services then that can constitute bad faith if the applicant’s motives are improper.
We hear many stories of popular brands which are filed in China by applicants unrelated to the true owner, but it is quite rare for such issues to arise in the UK. That said, there have been instances of trade mark trolls seeking to benefit from the success of a known brand. Over a number of years now one particular individual has taken the spotlight in Europe. Mr Michael Gleissner has filed various marks under a large number of different company names which he has set up and for which he has no legitimate interest. In one UK case Mr Gleissner sought protection for the mark TRUMP TV in the name of one of his UK companies, Trump International Limited. The company had no connection with the then US President Donald Trump. The mark was successfully opposed by an entity responsible for Mr Trump’s IP interests. The case succeeded on the grounds of bad faith. The fact that Mr Gleissner, or companies set up by him, were involved in many inappropriate trade mark actions was a factor in the case being successful on the grounds of bad faith. Mr Gleissner’s appeal against the UKIPO Hearing Officer’s decision failed.
On a related note, there is no provision in EU level law which recognises the concept of abuse of process or vexatious actions. However, again Mr Michael Gleissner has caused the issue to be considered after he initiated a non-use revocation action against an EU trade mark registration for the mark SANDRA PABST, a known fashion designer. The trade mark owner’s defence included a claim that the revocation action was an abuse of law and that the action had been filed with the mere intention of blackmailing the trade mark owner. They cited various other actions of Michael Gleissner and his companies which demonstrated a pattern of improper behaviour.
Ultimately the matter went to the Grand Board of Appeal at the EUIPO where the case was dismissed without even considering the evidence of use filed by the trade mark proprietor.
The case goes to show that even though the concept of bad faith may not be easily defined, when it is obvious that there is an element of bad faith, it is always worth putting together a case with all available evidence and the authorities may well take due note of it. Certainly if it involves Mr Gleissner!
Bad faith – United States
Over recent years, the USPTO has implemented a number of measures to try to combat bad faith filings, including:
- If representation is desired, requiring non-U.S. applicants, registrants, or a party in a trademark proceeding to be represented by a U.S-licensed attorney (with limited exceptions)[30];
- Requiring a physical domicile address (ex., not being able to list a P.O. Box or c/o address) and a valid email address for all applicants and registrants[31];
- Requiring the exact URL and date of access/printing for a specimen of use in the form of a web page printout[32]; and
- Conducting random audits of post-registration maintenance filings to require additional proofs of use for protected offerings[33].
Speed/quality of examination – Canada
The time between filing a trademark application and examination is now as much as three years. As of January 24, 2022, the Trademarks page of the Canadian Intellectual Property Office website starts with:
Dates of Trademark Applications currently at Examination
Applications not using the Pre-approved List of Goods and Services: January 9, 2019
Applications using the Pre-Approved List of Goods and Services: January 20, 2020
Madrid (based on date of WIPO notification of designation): September 10, 2020
Using pre-approved goods/services from the Canadian Intellectual Property Office website dramatically speeds up prosecution and avoids receiving examiner objections based on the description of goods/services. However, using the pre-approved goods/services is not always possible, for instance for nascent industries or not to jeopardize a claim for a priority date from a foreign application since the Canadian application must be for the “same kind of goods or services”.[34]
Canadian examination of trademark applications is very rigorous, and as discussed above, examiners now have the right to object to applications on the basis that the mark is not distinctive. One or more examiner’s reports with multiple objections causes additional delays after examination. Fortunately, an examiner may now call a trademark agent to deal with minor objections, for example, a request for a few redefinitions of goods/services, rather than issuing a formal examiner’s report.
Considerable guidance to avoid and to deal with objections is available in the Trademarks Examination Manual, Practice Notices, and an online list of pre-approved goods/services. The Canadian Trademarks Office does appear to work hard to be consistent with objections and treatment of all applications, and examiners are very approachable and helpful.
There are also circumstances under which an application may be expedited. A Practice Notice dated May 3, 2021, sets out how to make a request and the requirements to request expedited examination which are as follows:
The Office will accept requests for expedited examination in the form of an affidavit or statutory declaration, by a person having knowledge of the facts, setting out the specific circumstances and reasons for the request. The affidavit or statutory declaration must clearly set out how one or more of the following criteria are met:
- A court action is expected or underway in Canada with respect to the applicant’s trademark in association with the goods or services listed in the application;
- The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant’s trademark in association with the goods or services listed in the application;
- The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
- The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases the request will need to be attached to the affidavit or statutory declaration.
Speed/quality of examination – United Kingdom
This is the area of UK trade mark prosecution which I personally find most frustrating. It seems as though examiners are keen to meet targets for issuance of examination reports at the expense of quality of examination.
The UKIPO has, for a good many years, been a relatively quick examining office. Examination reports will normally issue within two months of filing and in the absence of any opposition it was possible to secure registration within three to four months. As Brexit came to pass there was a significant increase in the number of UK national trade mark filings. This was anticipated by the UKIPO and they engaged in a recruitment program to bring in more examiners.
While the UKIPO has some backlogs in certain areas, notably in contentious proceedings, examination of new applications still proceeds relatively quickly. Unfortunately, however, the quality of the examination is not always of the highest standard and we have seen objections raised which should not have been and we see inconsistency in the handling of applications from one examiner to another. We see this in relation to objections in relation to classification and the wording of goods and services and also in relation to the absolute grounds of descriptiveness and distinctiveness. I put this down to the newly recruited examiners not yet being sufficiently experienced.
As touched upon earlier, it is always worth attempting to argue against objections, other than in a no hope case, because there is always a chance that an examiner can be persuaded.
I also recommend requesting a Hearing where an objection is considered inappropriate. This will result in an application being looked at by a different, more senior examiner. In addition, I have encountered cases where the submission of arguments against an objection coupled with a fallback request for the appointment of a Hearing (if the objection is not to be waived), will result in the objection being dropped. Examiners do not want their objections to be overturned by a Hearing Officer. Sometimes it may even be appropriate not to bother with submitting arguments in response to an objection but simply to request the appointment of a Hearing. It is not unknown for the file to then be looked at by the more senior examiner and for the next communication to be a waiving of the objection rather than the appointment of the Hearing.
Speed/quality of examination – United States
The pandemic, and an over 25% increase in trademark application filings in 2021, have contributed to frustrating delays in examination of initial applications, review of responses to Office Actions, and review of post-registration maintenance filings by the USPTO, but the quality of Office Actions has improved.[35] To ease delays, the USPTO recommends trying to use listings of goods and/or services from the ID Manual and always identifying an international class in new applications, responding quickly to formal communications, using the dedicated fields in electronic response forms to respond to all of the issues in Office Actions, and resolving issues via Examiner’s Amendments, when possible.[36]
Conclusion
Unlike in the United Kingdom, an objection that a mark is not distinctive and clearly descriptive or deceptively misdescriptive since it is a geographical location may be absolutely fatal in Canada and the United States if the goods/services either do come from that location or do not, but could be believed to come from that location. Adding a distinctive word(s) to such a mark will overcome a descriptiveness objection but not overcome a deceptively misdescriptive objection.
Unlike in the United States, in Canada and the United Kingdom there is no Supplemental Register option for marks against which an examiner maintains a descriptiveness objection, and there is no requirement to enter a disclaimer of a descriptive term in a mark where the mark as a whole is acceptable.
Canada and the United Kingdom do not require use to obtain a registration, whereas the United States requires either use or use and registration abroad, the latter seeming to be an unfair advantage to foreign applicants. In addition, the United States has a rigorous proof of use requirement for registration, so it may be prudent to base a United States application on a current or forthcoming non-U.S. home registration or an International (Madrid) Registration. Given the delays in Canadian examination, basing a United States application on a Canadian registration may result in responding to a few suspension inquiries from the U.S. Trademark Office while waiting for the corresponding Canadian application to register. As such, for Canadian companies that want to use a foreign registration basis in the United States, filing a U.S. designation application with the use of the Madrid system could be advantageous.
Registrations may be expunged for non-use, but not until a registration is at least three years old in Canada and the United States, and five years old in the United Kingdom.
More broadly described goods/services in a United Kingdom application may increase the scope of protection for a registration, but such goods/services may require further specificity in a United States application and most likely will require further specificity in a Canadian application. However, Canadian or United States applications based on the priority filing of a United Kingdom application could be revised after filing or receiving a goods/services description objection so as not to prejudice the priority filing date.
A United Kingdom and United States application will likely be approved before a Canadian (non-Madrid) application is examined.
Finally, in all three jurisdictions, bad faith is a finding reserved for egregious, blatantly bad actors and actions.
Despite years of harmonization attempts in the global trademark community, key differences still exist that make country-specific expert trademark advice prudent when planning a trademark filing strategy and for successfully registering and protecting client’s brands.
[1] Canadian Trademarks Act, RSC 1985, c T-13, Section 37(1)(d)
[2] Canadian Trademarks Act, RSC 1985, c T-13, Sections 12(3), 32(1)(b)
[3] Hidden Bench Vineyards & Winery Inc. v. Locust Lane Estate Winery Corp., 2021 FC 156, at paragraph 81
[4] U.S. Trademark Manual of Examining Procedure (TMEP), July 2021, § 1209.01(c)
[5] Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25 at 27 (FCTD)
[6] Hidden Bench Vineyards & Winery Inc. v. Locust Lane Estate Winery Corp., 2021 FC 156, paragraph 65
[7] Id., § 1209.01(b)
[8] Id., § 1209.01(a)
[9] Id., §§ 1212; 1212.06
[10] Id., § 815.02
[11] 37 C.F.R. § 2.47(c)
[12] Canadian Trademarks Act, RSC 1985, c T-13, Section 30(1)
[13] TMEP, § 1103
[14] Id., § 1009
[15] Id., §§ 901; 901.03
[16] Id., § 1108
[17] Id., § 901.01
[18] Id., § 904.05
[19] Id.
[20] Id., § 1108.03
[21] “U.S. Patent and Trademark Office, Maximizing Use of Insurance Extension When Filing Statement of Use, (Jan. 8, 2022, 8:00 AM), https://www.uspto.gov/trademarks/trademark-updates-and-announcements/maximizing-use-insurance-extension-when-filing#_ftn1”
[22] TMEP, § 1402.01
[23] Id., § 1402.04
[24] Id., § 1402.14
[25] Canadian Trademarks Act, RSC 1985, c T-13, Section 38(2)(a.1)
[26] Canadian Trademarks Act, RSC 1985, c T-13, Section 30(1)
[27] Canadian Trademarks Act, RSC 1985, c T-13, Section 18(1)(e)
[28] Norsteel Building Systems Ltd. v. Toti Holdings Inc., 2021 FC 927
[29] Norsteel Building Systems Ltd. v. Toti Holdings Inc., 2021 FC 927, paragraphs 74-75
[30] Id., § 602
[31] Id., §§ 803.05(a-b)
[32] Id., § 1301.04(h)(iv)(C)
[33] Id., §§ 1604.21; 1613.22
[34] Canadian Trademarks Act, RSC 1985, c T-13, Section 34(1)(a)
[35] “U.S. Patent and Trademark Office, Trademarks Data Q4 2021 at a glance, (Jan. 9, 2022, 8:00 AM), https://www.uspto.gov/dashboard/trademarks/”
[36] “U.S. Patent and Trademark Office, Avoid processing delays with your trademark filings, (Jan. 9, 2022, 8:15 AM), https://www.uspto.gov/trademarks/apply/avoid-processing-delays”
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