Prosecution and examination procedure
Examination questions test the sequence from filing date to advertisement, the grounds an examiner can raise, and the strategic options when a report issues.
The sequence
- Filing date: accorded when the Registrar receives the prescribed content and fee.
- Formalities: applicant identity, agent authorization, classification, clarity of the goods and services statement.
- Substantive examination: sections 9 to 12, distinguishing guises under s. 13, confusion with registered marks and with co-pending applications, descriptiveness in English or French, primarily merely names or surnames, and disclaimers under s. 35.
- Report cycle: the examiner issues a report; the applicant responds within the prescribed period; extensions are available on request with a fee; approval leads to advertisement in the Trademarks Journal.
- Appeal: a refusal can be appealed to the Federal Court under s. 56 within two months.
Arguing descriptiveness
The test is whether the ordinary consumer would immediately understand the words as describing the character or quality of the goods or services or a condition of production. Suggestiveness is not descriptiveness, and ambiguity favours the applicant. Combined words can still be clearly descriptive.
Worked example
An examiner objects that CANADIAN CHOICE for maple syrup is clearly descriptive under s. 12(1)(b). Three options exist: argue that the phrase is ambiguous and does not describe any quality of the goods; submit evidence of acquired distinctiveness under s. 12(2), which must show the mark was distinctive at the filing date; or amend to a design mark. Weigh cost and scope: evidence is expensive and must reach back to the filing date, while a design amendment narrows the monopoly. Arguing first, with evidence prepared in parallel, is usually the efficient sequence.
Traps that cost marks
- Letting the response period lapse and relying on a late extension.
- Filing evidence of use that postdates the filing date in a s. 12(2) response.
- Answering some objections but not others - unaddressed objections are maintained.
- Discovering a section 9 official mark objection late; these are usually fatal and should be flagged at clearance.