In its online database, CIPO annotates certain marks “Registrability Recognized under the Trademarks Act”. The annotations can’t be found by searching the database; they can only be found by reviewing each weekly issue of the Trademarks Journal or by working with CIPO’s trademark .xml data.
“Registrability Recognized” annotations are reflected in the .xml data via the <tmk:TradeDistinctivenessIndicator></tmk:TradeDistinctivenessIndicator> XML element, which Section 74 of CIPO’s Trademarks Data Dictionary—WIPO standard XML ST.96, Version 2.2 dated 22-May-2019 describes as follows (click to enlarge the image):
As understood, for applications filed pursuant to the Trademarks Act, RSC 1985 c. T-13 and processed before the 17 June 2019 coming into force (CIF) of amendments to that statute, a “true” value was encapsulated within the <tmk:TradeDistinctivenessIndicator> element if CIPO determined that the mark had become distinctive pursuant to former TMA section 12(2); or that the mark was not without distinctive character pursuant to former TMA section 14. In the former case, the mark was annotated “Registrability Recognized under Section 12(2) of the Trade-marks Act” via a separate “Claim Code” XML element1 (example: TMA983191). In the latter case, the mark was annotated “Registrability Recognized under Section 14 of the Trade-marks Act” via another “Claim Code” (example: TMA998911). In either case the annotation “Registrability Recognized under the Trademarks Act” also appears.
The CIF amendments reworded and renumbered former TMA section 12(2) as section 12(3) and repealed former TMA section 14. Accordingly, the aforementioned “Claim Code” based annotations are no longer used. Instead, post-CIF, a “true” value encapsulated within the <tmk:TradeDistinctivenessIndicator> element is understood to mean that CIPO has determined the mark to be distinctive pursuant to new TMA section 12(3). There is no annotation specific to TMA section 12(3); such marks are simply annotated “Registrability Recognized under the Trademarks Act” (example: TMA1118828).
Post-CIF “Registrability Recognized” annotations made pursuant to TMA section 12(3) pertain to situations in which TMA section 12(1)(a) “name or surname” obstacles, or TMA section 12(1)(b) “descriptiveness" obstacles were overcome. By studying such situations one may develop a strategy for addressing such obstacles in relation to other marks.
A review of post-CIF “Registrability Recognized under the Trademarks Act” annotations appearing in the Trademarks Journal suggests that:
- “Registrability Recognized” annotations have been applied to 86 marks advertised in the TMJ between 12-Jun-2019 and 11-May-2022;
- 8 of those 86 annotations have been removed pursuant to erratum notices subsequently published in the TMJ;
- 1 of those 86 annotations was added pursuant to an erratum notice published in the TMJ (see TMJ 15-Sep-2021 page 638 re serial no. 1684961); and
- 29 of those 86 marks also bear “Territorial Restrictions” annotations, presumably pursuant to TMA Section 32(2), e.g. “Registration is restricted to the province of British Columbia”.
1 The <catmk:ClaimCode> element described in item 453 on page 79 of version 2.2 of the Trademarks Data Dictionary.↩
