The Trademarks Office conducts a search of the trademarks database as well as reviewing the mark itself with respect to several factors. This first review normally takes 5 to 7 months. If an Office Action /Examiners Report issues, the applicant has six (6) months to respond. With sufficient cause, a further six (6) month Extension of Time may be available.
Confusion
If the mark applied for is confusing with a pending application or a registered trademark for similar goods and/or services it can be refused.
Primarily Merely a Name or a Surname
If the mark is merely a surname it can be refused. This occurs when the word is only a name or surname that is not found to have any other significance and if it is listed twenty-five or more times in Canadian telephone directories. If it has another significance it may be accepted.
Clearly Descriptive or Deceptively Misdescriptive
The trademark may be refused if it is clearly descriptive or deceptively misdescriptive of the character or quality of the goods and/or services, of the place of origin, of the conditions of or persons employed in the production of goods or the performance of the services.
A word in a language other than English or French which is clearly descriptive of the character or quality of the goods or services is not prohibited. The name of the goods or services in any language is not a registrable trademark.
Not Without Distinctive Character
Under Section 14, the Trademarks Act provides for special treatment for applications based on foreign registrations, allowing them to be registered if the applicant furnishes evidence which shows that the mark is “not without distinctive character” in Canada. Thus trademarks which are not normally registrable because they are names or surnames or which are clearly descriptive may be registered pursuant to section 14. The applicant must submit an affidavit, specimens and details about the value and volume of sales in proof of such distinctiveness.
Description of Goods and Services
The Trademarks Act states that an application for a trademark must 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”. A listing of acceptable goods and services that are considered to be ordinary commercial terms for specific goods or services can be found in the Goods and Services Manual which is available online, although this is not an exhaustive list. Even if the goods or services are not found in the Goods and Services Manual, they may still be acceptable. The Trademarks Office will accept many of the descriptions from the Nice Classification System but not all. This is a frequent cause of Office Actions.