Advanced Trademarks Information
Table of Contents
- Unusual Features of Canadian Trademark Law
- No Nice.
- No Madrid
- Registration and Use Abroad
- Deadline for Filing
- Key Concepts in Canadian Trademarks
- Proposed Use
- Entitlement to Register
- First to Use not First to File
- The Application Process
- After Registration
- Removal: cancellation for non-use; cancellation for improper registration
- Transfer of trademark rights: trademark assignments
- Enforcement of Trademark Rights in Canada
Unusual Features of Canadian Trademark Law.
Canadian trademark law is similar to – but different from – trademark law in the United States and the United Kingdom (and therefore many other jurisdictions).
No Madrid Protocol.
Canada is not a signatory to the Madrid Protocol on trademarks. Trademarks filed in Canada must be filed directly.
No Nice Classifications.
Canada does not employ the Nice classifications, either in the filing or prosecution of trademark applications, or, in oppositions or litigation when assessing confusion. Instead:
i) the goods and services associated with the a trademark must be described in the application in ‘ordinary commercial terms’, and,
ii) In assessing confusion, whether during examination, opposition, or infringement proceedings, whether use of a mark in association with certain goods or services causes confusion with use of the same or a similar mark with the same or other goods and services is a question of fact assessed on the basis of the actual marks, the actual goods/services provided (not those described in the application/registration), and the likely impression on consumers (having regard to such factors as the nature and type of consumers, the channels of trade, etc.).
Registration in Canada of trademarks registered abroad.
Canada is unusual in that a potential basis for registrability is ‘use and registration abroad’. This basis for registrability does not eliminate the requirement that the trademark application not be confusing with a prior Canadian trademark registration or pending application, but does provide a means to avoid the full impact of the registrability requirements “internal to the mark” (not primarily merely a name, not merely descriptive, etc.: see registrability).
Deadline for filing a trademark in Canada
There is no deadline per se for when a trademark application must be filed in Canada. However, in accordance with the Paris Convention, in order for your Canadian trademark application to claim priority (ie. to effectively back-date the “application date”)from an earlier trademark filing outside in the United States or other country outside Canada, the Canadian application must be filed within <strong>6 months</strong> of the priority filing which must be the <strong>first</strong> filing in another country of the mark. For instance, if you filed first in the US, then in the CTM, then in Mexico, to claim priority under the Paris Convention the Canadian trademark application must be filed within 6 months of the US application (the first).
Key Concepts in Canadian Trademark Law
In this section, we discuss several key principles of Canadian trademark law: registrability and entitlement to register, and thus confusion and descriptiveness, and use. These principles are highly relevant to the assessment of the trademark application during the application process, but also in any litigation related to enforcement (infringement) or cancellation.
Two trademarks are confusing if use of both trademarks would lead to the inference that the goods or services used in association with the trademarks come from the same source. Detailed information on confusion in Canadian trademarks law can be found here. Similar sounding words for similar products are likely to be confusing; conversely, the exact same trademark can be used with very different products or services if it is unlikely to cause confusion as to the source. For instance, three different companies could own rights to GATOR as a trademark if, for instance, one sold a type of battery cables called GATOR, another sold clothing with GATOR on the label, and the third provided accounting services as GATOR Accounting.
Use is a key concept in trademark law. In Canada, a trademark is used in association with goods if, at the time of any sale of the goods the trademark is clearly marked on the packaging of goods or a bill of lading that accompanies them. A trademark is used in association with services if, at any time when the services are advertised, the trademark is used in performance or advertising of the services.
Trademark rights are associated with goods or services from a specific source. A trademark does not, therefore, float in the ether – it only has meaning (and value) to the extent that it is associated with certain goods and services that originate from a particular source.
Use and Proposed Use.
When an applicant files an application to a Canadian trademark, the applicant may:
a) Already be using the trademark in Canada; or
b) Propose to use the trademark in Canada at a later date.
A trademark cannot be registered until the trademark is used in Canada by the applicant. Accordingly, when a Canadian trademark application is filed on the basis of ‘proposed use’ (equivalent to ‘intent to use’ or ‘ITU’ in the United States), ultimately (assuming all other hurdles to registration of the trademark are overcome in prosecution) before the trademark can be registered, the applicant must file a Declaration of Use. The date of first use in a Declaration of Use must be after the date that the application based on proposed use was filed (ie. An applicant cannot file based on proposed use, and then later claim use prior to the date of the application)
A trademark is not registrable in Canada if, at the date that the application is filed:
a) The trademark is deceptively misdescriptive;
b) The trademark is confusingly similar to another trademark used in Canada (or for which they have filed an applied for) previously by another person;
c) The trademark is primarily merely the name of a person living or deceased within the past 30 years.
Accordingly, ‘registrability’ is a concept that applies to anyone as a potential registrant (‘can anyone register this trademark?’), whereas ‘entitlement’ is a question of whether ‘this applicant can register this otherwise registrable trademark’.
Entitlement to register.
The right to register a trademark belongs to the first person to “use” the trademark in Canada, or, if no one has used it in Canada, the first person to file an application to register the trademark based on proposed use.
From application to registration: trademark prosecution in Canada
A trademark application in Canada is commenced by filing the prescribed form and paying the prescribed government fee of $250 (if filed online). A trouble-free application usually proceeds from application to registration in 12-18 months. A further government fee of $200 is payable upon registration.
Canada is a ‘substantive examination’ trademark regime and is not a signatory to the Madrid convention. A trademark application is subjected to substantive examination by a trademarks examiner are the Canadian Intellectual Property Office, and usually receives one or more ‘Examiner’s Reports’. If the objections of the Examiner cannot be overcome, the application will be rejected. If the application is allowed by the Examiner, it will then be laid open for opposition. Only after the period for opposition has expired and all oppositions (if any) have been overcome, may the trademark then be registered.
View the Canadian Trademark Process Flowchart in PDF here.
Fundamental requirements for registration.
In order for an applicant to register a mark in Canada as a registered trademark:
a) The trademark must be registrable, and
b) The applicant must be the person entitled to register the trademark.[see the discussion of these key concepts under Key Concepts in Canadian Trademark Law above].
A Canada trademark application:
a) Will be assessed for compliance with these fundamental requirements by the Trademarks Examiner at the Canadian Intellectual Property Office during the prosecution phase and before the trademark may be registered, and,
b) Likely will be assessed for compliance with these fundamental requirements by the Trademarks Opposition Board if opposition proceedings are commenced by a third party before registration during the prosecution phase.
Every Canadian trademark application undergoes substantive examination: a detailed review by a trademark examiner, employed by the Canadian Intellectual Property Office for whether this trademark can be registered at all in Canada, and if so, whether it can be registered by this applicant. As a result, virtually every Canadian trademark application will receive at least one Trademark Examiner’s Report and if the objects raised in this report are not overcome by the applicant, the application will be rejected.
A Canadian trademark application can be opposed by a third party after examination but before allowance. The Canadian trademark opposition process is complex and analogous to litigation. Learn more about the process of opposing a Canadian trademark application (and overcoming opposition) here.
After registration: renewal, removal, enforcement, and transfers.
A Canadian trademark registration is valid for an intial period of 15 years, and be renewed for successive 15 year periods indefinitely. By and large, enforcing and defending your trademark rights, and making money from your trademark, is an entirely private affair in Canada (ie. the ‘police’ or ‘the state’ will not help you to enforce your rights), and disputes are resolved by civil litigation in either the Federal or Provincial courts.
A Canadian trademark registration is valid for 15 years, and can be renewed upon payment of the renewal fee ($350) for successive 15 year terms indefinitely. It is not necessary to file any evidence of use in order to renew a Canadian trademark registration. Issues of lack of use are dealt with under separate proceedings (discussed below).
Removal of a registered trademark.
A registered Canadian trademark may be removed from the register for two reasons:
- non-use, and
- improper registration.
Cancellation for Non-Use.
A Canadian trademark registration may be cancelled if at any time that is 3 years after the date of registration, the owner has not used the trademark within the previous 5 years. These proceedings for removal of the trademark from the register administrative (and not adversarial) in nature and are conducted internally to the Office of the Registrar of Trademarks. In order to preserve the anonimity of the party interested in having the trademark removed from the register, non-use proceedings are usually initiated in the name of a law firm. The party that wants the trademark removed files a request and pays the prescribed fee ($400). No further evidence can by filed by the party that requests a non-use hearing. The owner of the registered trademark is obliged to submit evidence of use of the trademark – otherwise, the trademark will be removed from the register. Because of the technical requirements of the rules of evidence and the nature of proof of ‘use’ of the trademark, owners of registered trademarks are usually represented by legal counsel when they respond to a non-use proceeding. Learn more about these ‘cancellation for non-use’ proceedings here.
Cancellation for Improper Registration.
A registered Canadian trademark may be cancelled and removed from the register(technically called “expunged”) if, at the time of registration, the trademark was not registrable or the applicant was not the person entitled to apply to register it. These proceedings are adversarial in nature. The litigation must be conducted in the Federal Court of Canada which is the sole court with jurisdiction to order an amendment to the Register of Trade-Marks.
Assignments and other trademark transfers
A Canadian trademark and all associated goodwill can be transferred. This is frequently accomplished – and documented – by way of a standalone trademark assignment, which can apply to just one or more Canadian trademarks, or, can affect multiple trademarks in multiple jurisdictions.
There are very few formalities required for effective trademark assignments in Canada. An assignment must be in writing and signed by the assignor. They do not need to be notarized. They do not need to be witnessed, although that is good practice. They do not need to be signed (or accepted) by the assignee, although that too is good practice.
To register an assignment of a Canadian trademark on the Register of Canadian trademarks it is not necessary to file the original assignment. Therefore, we do not require original assignment documents from you – a scanned version of the trademark assignment (preferably in PDF), or fax, is sufficient. In fact, all that the Canadian trademarks office requires is ‘evidence’ of the assignment, and thus even the assignment per se is not absolutely required (although best practice is to file the trademark assignment itself, rather than indirect evidence that an assignment has taken place.)
Transfers of trademarks between separate corporate entities within one corporate group should be properly documented by way of a signed assignment, and this assignment recorded on the trademark Register.