Trademark Disclaimers in Canada: Section 35 Explained

In Canada, trademark disclaimers play a more limited and nuanced role than in some other jurisdictions. While disclaimers are voluntary under Canadian law, they are often requested by the Canadian Intellectual Property Office (CIPO) during examination to clarify the scope of rights claimed in a trademark—particularly where a mark includes descriptive or non-distinctive elements.

This article explains what trademark disclaimers are in Canada, how Section 35 of the Trademarks Act applies, when CIPO may request a disclaimer, and what disclaimers do (and do not) mean for trademark rights.

1. What is a trademark disclaimer in Canada?

A trademark disclaimer is a statement in a trademark application or registration indicating that the applicant does not claim exclusive rights to a particular word or element by itself, apart from the trademark as a whole.

In Canada, disclaimers are most commonly used in connection with:

• Descriptive wording
• Generic or industry-standard terms
• Geographic references used descriptively

A disclaimer does not remove the disclaimed wording from the trademark, nor does it change how the mark appears in use or branding.

2. Section 35 of the Trademarks Act: disclaimers are voluntary

Trademark disclaimers in Canada are governed by Section 35 of the Trademarks Act.

Unlike some jurisdictions, Canadian law makes clear that:

• Disclaimers are voluntary
• Applicants are not automatically required to enter disclaimers
• There is no mandatory disclaimer rule built into registrability

In theory, an applicant can choose whether or not to include a disclaimer. In practice, however, disclaimers are often introduced following discussion with CIPO during examination.

3. Why does CIPO often request disclaimers?

Although disclaimers are voluntary, :contentReference[oaicite:0]{index=0} (CIPO) frequently requests disclaimers as a practical way to clarify the scope of rights claimed in a trademark.

CIPO may request a disclaimer where a trademark includes wording that:

• Is clearly descriptive of the goods or services
• Is generic or commonly used in the industry
• Describes a characteristic, quality, or function

The purpose is to confirm that the applicant is not claiming exclusive rights over descriptive words—particularly when those words appear as part of a logo or composite mark.

4. Disclaimers and logo (design) marks

In Canada, disclaimers are most commonly associated with logo or design marks that include both:

• Distinctive design elements, and
• Descriptive or non-distinctive wording

For example, when a logo contains descriptive words alongside distinctive graphics, CIPO may request a disclaimer to clarify that the applicant’s exclusive rights lie in the mark as a whole, not in the descriptive wording alone.

This approach allows registration of the logo while preserving public access to descriptive language.

5. What does a disclaimer NOT mean in Canada?

Trademark disclaimers are often misunderstood. A disclaimer:

• Does not remove the wording from the trademark
• Does not weaken ownership of the mark as a whole
• Does not require changes to branding or marketing
• Does not mean the trademark is invalid or inferior

The trademark remains protected in its entirety. The disclaimer simply clarifies that no exclusive rights are claimed in the disclaimed element by itself.

6. Do disclaimers fix descriptiveness problems?

In Canada, disclaimers do not cure refusals based on clear descriptiveness under Section 12(1)(b).

Because Canada has no Supplemental Register, a clearly descriptive mark cannot be saved by adding a disclaimer. If a mark is refused as clearly descriptive, the applicant must:

• Successfully argue that the mark is not clearly descriptive, or
• Prove acquired distinctiveness under Section 12(3)

A disclaimer may help clarify scope in a registrable mark, but it does not make an otherwise unregistrable mark registrable.

7. Strategic considerations when agreeing to a disclaimer

When CIPO requests a disclaimer, applicants should consider:

• Whether the disclaimed wording is truly descriptive or generic
• Whether resisting the disclaimer provides meaningful commercial value
• Whether the distinctive elements of the mark remain strong

In many cases, agreeing to a disclaimer is a practical and efficient way to move the application forward without reducing meaningful trademark protection.

8. Key takeaway

In Canada, trademark disclaimers under Section 35 are voluntary, but they are frequently requested by CIPO to clarify that applicants do not claim exclusive rights over descriptive wording—especially in logo or composite marks.

Disclaimers do not weaken a trademark or remove words from the mark. Instead, they help define the scope of protection while allowing registration of marks that include non-distinctive elements.

This article is for general informational purposes only and does not constitute legal advice.