Canadian trade-marks prosecution practice has changed over
the past several months. Three important changes are as
follows.
1. Disclaimer Requests
Descriptive trade-marks are not registrable in Canada. The
policy behind the law is that it's unfair for a
registrant to monopolize a clearly descriptive term:
competitors should be able to use the same term to describe
their products and services.
Sometimes only a portion of a trade-mark is descriptive. If
so, and the mark as a whole is not descriptive (and if it
complies with all other legal requirements), then the mark will
be registrable. In those cases, the Canadian Intellectual
Property Office (CIPO) has typically required applicants to
"disclaim" the descriptive portions of the marks. The
authority to do so is specifically granted in the Canadian
Trade-marks Act.
