The following is a series of trademark law pointers addressing frequently asked questions for foreign agents and companies seeking to register or protect their trademarks in Canada.
APPLICATION BASIS
A trademark application in Canada can be filed claiming prior use in Canada (provided such prior use is substantial, the prior user might also exercise common law trademark rights in canceling subsequent trademarks and suing for infringement, even in the absence of registration, although the cost and difficulty of such an action is more difficult than if a trademark registration is in place). Other bases of a trademark application in Canada can include:
- intent to use the mark in Canada;
- making a trademark well known in Canada;
- application and use of the trademark in home jurisdiction;
- or registration and use of the trademark in the home jurisdiction of the applicant.
Generally speaking, amendments can only be made to the basis of an application in advance of approval for advertisement by the Canadian Intellectual Property Office. Once a case has been approved for advertisement or has been advertised in the Trademarks Journal, there are very limited numbers or types of amendments which are permissible before the Office without either re-filing or re-advertising the application.
ASSIGNMENTS OF TRADEMARK APPLICATIONS OR REGISTRATIONS
It is possible to assign Canadian trademark applications and registrations. Assignments can be recorded in the Canadian Intellectual Property Office and it is advisable to do so. Should you require assistance in the preparation of assignment documents or a review of a global assignment document, we are pleased to provide this service. The turnaround time in the Canadian Intellectual Property Office on assignment recordals is currently in the ballpark of three to four months.
CHANGES TO THE MARK, POST-REGISTRATION
In order to maintain the validity of a Canadian trademark registration, the trademark must be used as registered. This is something for clients to keep in mind as there is oftentimes some “creep” or morphing of trademarks over many years as they are modernized or revisited by or during brand revisions or novation. Modest, non-substantial modification of the trademark may not result in a sufficient departure to render the initial registration susceptible to cancellation but this is something to consider and on which opinion or advice should be taken at the relevant point in time.
CLASSIFICATION OF GOODS AND SERVICES
All different types of wares and services can be included in one application – separate applications for different classifications of wares and services are not necessary for any legal reason, although this type of an approach can still be taken if there is a tactical preference to do so. Canada is a participating country in the Nice Agreement and therefore it is a requirement for all new Canadian trademark applications that the goods and services covered under the application are grouped according to the Nice Classification system.
COMMON LAW RIGHTS
It is not necessary to register a trademark in order to accrue rights in Canada in the channel of trading question. Use of the trademark in the normal course of business, or in sale of products and services, will result in the accrual of some common law rights in favor of the owner. There are benefits to registration which can supplement an owner’s position vis-à-vis the common law. We are happy to discuss this in further detail if you wish.
DISCLAIMERS
Since the summer of 2007, the Canadian Intellectual Property Office no longer requires disclaimers of descriptive terms apart from trademarks. Voluntary disclaimers are still possible. Absence of the disclaimer requirement has not alleviated or removed the prohibition on descriptive or misdescriptive trademarks.
INTENT TO USE (ITU) APPLICATIONS
An applicant filing a trademark application on the basis of an intent to use the mark in commerce in Canada has up to three years from the date of filing of the Canadian application to declare the mark in use on the wares and services contained in the application. At that point, if not all of the wares or services are in use, it would be necessary to either remove some of the wares or services from the application and re-file them in a subsequent application, or to allow the application to go abandoned if none of the wares or services in the initial application are yet in use in Canada. It is, in certain circumstances, possible to obtain some extensions of time of this three year deadline.
LICENSING
There are certain basic requirements for effective trademark licensing in Canada. To summarize, the trademark owner needs to maintain control over the quality of the wares and services in question. We are happy to provide specific or substantive advice on the sufficiency of a particular license or licensing provision at your request.
MADRID PROTOCOL
On June 17, 2019, Canada joined the Madrid Protocol, streamlining the outbound filing process for Canadian applicants into foreign countries and also allowing foreign applicants to enter the Canadian trademark system similarly. To date we have had a number of clients successfully take part in the Madrid system in order to maximize international trademark coverage at minimal cost.
OFFICIAL MARKS
Section 9 of the Canadian Trademarks Act provides for a couple categories of special trademark protection for governments, universities and other public authorities. To the extent that these sections are applicable they are advantageous to an applicant, insofar as they provide the ability to seek the protection of the trademark across all channels of trade, as well as to potentially avoid the application of other registrability criteria pursuant to the Act. There has been case law of late restricting the applicability of this section and it is anticipated that within the next few years there will be significant revision or restriction. In the meantime, however, if you wish to consider the applicability of this section to a client please let us know and we are happy to review same.
OPPOSITION PROCEEDINGS
As is the case in many countries, Canadian trademark legislation provides the ability for a third party to oppose the registration of a trademark once it is advertised in the Trademarks Journal published by the Canadian Intellectual Property Office. Publication takes place following approval of the application for that trademark by the Examiner assigned to examine that particular application. Typical grounds of opposition might include conflicting superior rights for an allegation of conflicting superior priority, as well as other grounds of non-registrability which might be raised or alleged against the trademark in question.
PARIS CONVENTION
Canada is a signatory to the Paris Convention and, as such, the six month Paris Convention priority filing mechanism is available in Canada. If the applicant’s home country is a member of the Paris Convention and a home application has been filed within the six months preceding the proposed Canadian filing date, the filing of the home application can be claimed as the filing date in Canada.
PENDENCY
Currently a non-contentious trademark application is taking in the range of 24 months from filing to registration, if no significant prosecution hurdles or opposition are encountered.
PROCEDURE GENERALLY
Upon filing of a trademark application in Canada, the application will undergo internal examination in the Canadian Intellectual Property Office for conformity with Canadian laws. A search is undertaken to identify any previously registered marks or co-pending the marks subject of which are confusingly similar to the mark subject of the application. Upon approval of the application, the application will be advertised in the Canadian Trademarks Journal and there is a public opposition period of two months within which interested parties can potentially file an opposition to the registration of the application. Following expiry of the opposition period, provided that no opposition is filed, the Notice of Allowance will be issued. It is our current experience that trademark applications remain pending for approximately 12 to 18 months from start to finish, in cases lacking protracted examination or opposition difficulties.
REGISTRABILITY
A word mark or design mark, or symbol or shape of the wares or their packaging that is distinctive of the wares or services of the applicant are in most cases protectable. This is subject to the requirement that the mark be distinctive, and not be primarily merely the surname of an individual who is living or has died within the preceding 30 years, is not either clearly descriptive or deceptively misdescriptive in the English or French languages of the character or quality of the wares or services, is not the name in any language of the wares or services in connection with which it is proposed to be used, is not confusing with a registered trademark, nor is it a mark which is prohibited by Section 9 of the Trademarks Act, or a potential geographical indication.
REGISTERED USER/LICENSE RECORDAL
It was previously the case that it was necessary to record registered users or licensees of trademarks in the registry maintained by the Canadian Intellectual Property Office. These registered user and license provisions were removed or amended a number of years ago. If you have questions on the recordability or advisability of recording particular title or licensed documents please let us know and we are happy to discuss same.
SEARCHES/CLEARANCE
Various levels of searching can be undertaken in advance of filing a Canadian application. If you wish to conduct a simple trademark search, you can access the entire Canadian Trademarks Database free of charge via our Web site, www.furmanip.com. For more complex searches or opinions, we are pleased to advise our clients regarding same – the three most typical types of searches which we conduct on clients behalf are basic register knockouts, more comprehensive register searches which again are typically primarily directed towards assessing the registrability of the trademark, and a comprehensive search which includes a register search as well as a search of common-law and unregistered sources to assess the existence of any infringement or adoption risks in the Canadian marketplace in addition to the registrability of the trademark. Contact us today if you are interested in performing a search before filing your trademark application.
TERM OF REGISTRATION
A Canadian trademark registration lasts for 10 years from the date of registration. The trademark is then renewable in similar 10 year periods thereafter. There is no limit to the amount of renewable terms, so long as the trademark remains in use in the Canadian marketplace.
USE
Use of a trademark in Canada in respect of products typically comprises actual sales of those products bearing the trademark. Specimens of such use would include commercial documentation or packaging sold along with the product or the product itself bearing the trademark. Use of a trademark in respect of services can comprise advertisement of those services to the public for sale.
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