If you inspect any of CIPO’s 1.7 million trademark .xml files—even for a mark initially protected under the Trade Mark and Design Act (1868) 31 Vict., c. 55 or under the Unfair Competition Act (1932) 22-23 Geo. V, c. 38—you will discover that the file contains a tmk:TradeDistinctivenessIndicator element encapsulating either the word “true” or the word “false”.
CIPO’s Trademarks Data Dictionary describes the tmk:TradeDistinctivenessIndicator element as providing an “Indication that the mark has acquired distinctiveness through use in trade”. This element is not exposed by CIPO’s online trademark database—either as a searchable field or otherwise. To investigate this element one must use CIPO’s .xml data.
As of 15 March 2021, 14,835 of CIPO’s 1,771,559 .xml files contain a “true”
tmk:TradeDistinctivenessIndicator element (this includes both active and inactive marks). Here for example is a small extract from CIPO’s .xml file for
application no. 1100727 (now TMA756177) in which I have red-highlighted the “true”
<tmk:TradeDistinctivenessIndicator> element (click to enlarge the image).
In general, a “true” tmk:TradeDistinctivenessIndicator corresponds to the “Registrability Recognized under Section 12(2) of the Trade-marks Act” and “Registrability Recognized under Section 14 of the Trade-marks Act” annotations displayed in the “Claims” section of CIPO’s online trademark database. Specifically, as of 15 March 2021:
- 1,709 marks are annotated “Registrability Recognized under Section 12(2) of the Trade-marks Act”. application no. 1851536 is an example.
- 13,095 marks are annotated “Registrability Recognized under Section 14 of the Trade-marks Act”. application no. 1100727 is an example.
Practitioners familiar with the
Trademarks Act, RSC 1985 c. T-13 (TMA) as it read before coming into force of the 17 June 2019 amendments will understand that TMA Section 12(2) and 14 annotations pertain to
acquired distinctiveness, not
inherent distinctiveness—the latter being CIPO’s interpretation of the requirement imposed by
TMA Section 37(1)(d). If a mark is registrable only because it has
acquired distinctiveness, it would appear to be difficult to argue that the mark is inherently distinctive.
CIPO appears to have ceased applying TMA Section 12(2) and 14 annotations upon coming into force of the 17 June 2019 amendments, which is understandable since the amendments rewrote and renumbered Section 12(2) as
Section 12(3); and repealed the
former Section 14. Here, for example, are the 7 most recently advertised marks with TMA Section 12(2) annotations:
|
Trademark
|
Application No.
|
Advertisement Date
|
|
CARCOSTCANADA
|
1609772-00
|
29-May-19
|
|
COSSETTE
|
1754643-00
|
15-May-19
|
|
MUSICAL.LY
|
1783845-00
|
20-Feb-19
|
|
ACRSA & Maple Leaf Design
|
1717370-00
|
30-Jan-19
|
|
CASARA & Maple Leaf Design
|
1717371-00
|
30-Jan-19
|
|
ASSOCIATION CIVILE DE RECHERCHES ET SAUVETAGE AÉRIENS
|
1717372-00
|
30-Jan-19
|
|
CIVIL AIR SEARCH AND RESCUE ASSOCIATION
|
1717375-00
|
30-Jan-19
|
Nonetheless, a review of prosecution file histories pertaining to marks having TMA Section 12(2) or 14 annotations might yield some arguments that could be used to traverse “not inherently distinctive” (NIDS) objections raised pursuant to TMA Section 37(1)(d). After all, CIPO has cited discussions of distinctiveness set forth in authorities
1 stretching back over half a century in support of its interpretation of TMA Section 37(1)(d).
It is possible that CIPO may improve the data. For example, I can track registrability annotations as outlined above because CIPO meticulously encodes them in the .xml data. To illustrate, here is a small extract from CIPO’s .xml file for
application no. 1609772 pertaining to the mark’s TMA section 12(2) annotation (click to enlarge the image). Given that former TMA Section 12(2) has been rewritten and renumbered as Section 12(3), it is hoped that CIPO will create a new code and include it in .xml files for marks which are determined to be registrable in accordance with the new TMA Section 12(3) so as to enhance the value of CIPO’s trademark .xml data.
Besides encoding TMA s. 12(2) and s. 14 annotations, CIPO also encodes (independently of the tmk:TradeDistinctivenessIndicator element) the following historical annotations:
- “Registration is subject to the provisions of Section 67(1) of the Trademarks Act, in view of Newfoundland Registration No. 99nnnn”. See for example application no. 1188791. 514 marks bear this annotation as of 15 March 2021.
- “Registrability Recognized under Rule 10 of the Trade Mark and Design Act”. See for example application no. 0152414. 194 marks bear this annotation as of 15 March 2021.
- “Registrability Recognized under Section 28(1)(d) of the Unfair Competition Act 1932”. See for example application no. 0378595. 764 marks bear this annotation as of 15 March 2021.
- “Benefit of Section 14 of the Trade-marks Act is claimed”. See for example application no. 1867479. 1,171 marks bear this annotation as of 15 March 2021.
Many “Claim” possibilities pertaining to Canada’s former use-based registration system are also encoded in the .xml data: there are 7 codes for different types of “making known” claims; another 7 for different types of “use in Canada” claims; plus others for the former proposed use basis and still others for foreign application/registration basis claims. (These correspond to dropdown options formerly made available by CIPO’s eFiling template prior to abolition of the use-based system, e.g. “used in Canada since as early as...”, etc. For more examples, click the “Registrability Claims” tab at the top of this page.)
Conceivably, CIPO could create and consistently apply a new code specific to a distinctiveness finding resulting from successful traversal of a TMA s. 37(1)(d) NIDS objection. That would further enhance the value of CIPO’s trademark .xml data. A publicly accessible and searchable Canadian trademark prosecution history archive would be an even more welcome enhancement. In the absence of such measures, practitioners should continue to collect details of successful NIDS objection traversals in their precedent / knowledge management systems.
I’ll conclude by observing that, somewhat bizarrely, “Registrability Recognized under Section 12(2) of the Trade-marks Act” annotations appear in some applications which have not been examined (as of 15 March 2021). See for example application nos.
1962148,
1936690,
1932300 and
1928904. These apparent aberrations will presumably be dealt with during examination, although I note that at least one of them has already been withdrawn. I initially wondered about a possible glitch in CIPO’s eFiling system, but I suppose it is more likely that the applications were paper-filed.
1 Such citations have included H.G. Fox, Canadian Law of Trade Marks, 3rd ed. (Toronto: Carswell, 1972) page 25; Canadian Jewish Review Ltd. v. The Registrar of Trade Marks (1961), 37 CPR 89 (Exch) at page 93; John Labatt Ltd. v. Registrar of Trade Marks (1984), 79 CPR (2d) 110 (FCTD) at page 120; Davidoff Commercio E Industria Ltda v. Davidoff Extension S.A. (1989), 24 CPR (3d) 230 (TMOB) at page 234; Astrazeneca AB v. Novopharm Ltd. and The Registrar of Trade Marks (2003), 24 CPR (4th) 326 (FCA) at para [16].↩
