Canadian Trademark Blog

Change in Practice – Trade-marks Office and Disclaimers

The Canadian Intellectual Property Office recently published a new practice notice advising that the Trade-marks Office (the “Office”) will generally no longer require applicants to provide a disclaimer of the exclusive right to use certain words in trade-mark applications. Under previous Office practice (and under Section 35 of the Trade-marks Act), disclaimers have traditionally been required for portions of trade-marks that were considered unregistrable, such as a term that is clearly descriptive of the claimed wares or services or that is primarily merely a surname.

The Office will continue to accept voluntary disclaimers. As a disclaimer can be viewed as an admission by the applicant that the disclaimed term is unregistrable by itself, there likely won’t be many situations where a voluntary disclaimer would be a good idea. One exception might be if the applicant has entered into a co-existence agreement with another party and is contractually obligated to provide such a disclaimer.

For any pending applications that have not yet been advertised in the Trade-marks Journal for Opposition purposes, the Office will accept a request for withdrawal of a disclaimer that has already been provided by an applicant.

Looking ahead, it’s possible that this change in policy might result in more objections by Examiners on the basis that a mark is unregistrable as a whole because it contains words that are unregistrable by themselves – whereas previously the Examiner might have been willing to approve the application if the applicant provided a requested disclaimer. Another possibility is an increase in the number of oppositions by parties that want an applicant to provide a voluntary disclaimer so that an otherwise unregistrable portion of a mark remains available to other parties to use as part of their own trade-marks.

This entry was posted by Karen Monteith on Wednesday, September 12th, 2007 at 1:39 pm and is filed under Registration. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.