mardi, mars 08, 2011

Canada: Disclaimers continue to have use in Canadian trademark practice

A disclaimer is typically considered to be an admission by the trademark applicant that the disclaimed term is not independently registrable. Historically, the Canadian Trademarks Office required disclaimers to be entered by applicants in respect of such terms, but the policy of requiring disclaimers was largely discontinued by a Trademarks Office practice notice of August 15 2007. However, it is necessary to remain aware of disclaimers.

Why the need for disclaimers?

The Trademarks Act establishes that certain categories of words and designs are generally not independently registrable, such as words that are the name, in any language, of the wares or services.

Disclaimers allow applicants for trademarks that contain some of these categories of unregistrable words or designs to disclaim the right to the exclusive use of any portions that are not independently registrable. In some cases each individual portion of a trademark can be disclaimed; if the combination of elements is distinctive, the trademark as a whole may still be registrable.

Effect of disclaimers on trademark rights

On registration, trademark owners have the right to prevent unauthorised use of their trademarks, including use of the disclaimed portions. In determining whether two marks are confusing, the trademarks will be considered in their totality. However, since one of the main purposes of disclaimers is to permit others to use the disclaimed portion of a trademark in a trademark of their own, typically, no confusion will be found if the only similarity between the two trademarks is the disclaimed matter.

In addition, an applicant can subsequently register the disclaimed portion independently if the disclaimed matter becomes distinctive in the context of the applicant's wares or services.

Historical use of disclaimers

Before 2007, the registrar could require an applicant to disclaim the right to the exclusive use of any portion of a trademark that was not independently registrable. Failure to do so could have resulted in the registrar's rejection of the application.

In general, disclaimers were beneficial for avoiding or overcoming an objection in cases where a portion of the trademark fell into one of the categories of unregistrable words or designs. However, a disclaimer could not be used to overcome an objection alleging that:

  • the trademark was confusing with an earlier applied for or registered trademark;
  • the trademark was a protected geographical indication for wine or spirits; or
  • the dominant feature of the trademark was clearly descriptive, deceptively misdescriptive or a term or design that was common to the trade.

Current use of disclaimers

On August 15 2007 the Trademarks Office issued a practice notice stating that the registrar "generally would not require" applicants to enter disclaimers, although voluntary disclaimers would continue to be accepted.

Although the scope of the words 'generally would not require' is unclear, applicants are typically no longer required to disclaim unregistrable portions of their trademarks, unless the trademark contains an 11-point maple leaf (shown on the Canadian flag).

Since this practice notice was issued, voluntary disclaimers have become fairly uncommon. That said, from time to time, an applicant may decide to disclaim a portion of its trademark voluntarily. A voluntary disclaimer may, for example, be entered for strategic reasons, such as to avoid conflict with a third party.

Numerous trademark registrations exist that contain disclaimers. Knowledge of the effect of disclaimers on trademark rights is important in evaluating the scope of protection offered by such existing registrations.

Comment

Overall, disclaimers appear to have fallen into disuse in recent years; however, it is necessary to be aware of their use and effect in light of the fact that:

  • disclaimers may become an issue when dealing with older registrations;
  • voluntary disclaimers are still accepted; and
  • disclaimers will still be required in certain circumstances.

For further information on this topic please contact Jayda A Sutton at Smart & Biggar/Fetherstonhaugh by telephone (+1 416 593 5514), fax (+1 416 591 1690) or email (jsutton@smart-biggar.ca).

Rebecca Rodal, articling student, assisted in the preparation of this update.

Contributed by Smart & Biggar/Fetherstonhaugh