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Canadian trademark law pointers

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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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Canadian patent law pointers

The following is a series of patent law pointers addressing frequently asked questions for foreign agents and companies seeking to register or protect their patents in Canada.

ASSIGNMENTS OF PATENT APPLICATIONS OR REGISTRATIONS

It is possible to assign a patent application or registration in Canada and the assignment can be recorded in the Canadian Intellectual Property Office. The current turnaround time for assignment recordals in the Canadian Intellectual Property Office is approximately three months.

CONTINUATION-IN-PART PATENT APPLICATIONS

There is no CIP mechanism as such in Canada.  It is possible to claim internal priority within Canada within 12 months of the date of filing of the initial application to which priority is to be claimed, or depending upon the nature of the subject matter change desired a divisional filing strategy could also be considered.

CONVENTION PRIORITY REQUIREMENTS

It is possible to claim Paris Convention priority in Canada, within the 12 month period following the filing of the home application.

ENTITY STATUS

Section 2 of the Patent Rules provides that “small entity” means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees, or has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity that employs 50 or fewer employees or that is a university, and has knowledge of any subsequent transfer or license of, or of any subsisting contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees.

INTERNAL PRIORITY

Priority can be claimed within Canada to a previously filed complete or incomplete Canadian application for up to 12 months from the earliest date of filing claimed.

PATENT MARKING

There are no mandatory patent marking requirements in Canada.

NATIONAL PHASE ENTRY OF PCT APPLICATIONS

It is possible to make a late national phase entry of a PCT application in Canada up to 12 months after the 30 month deadline.  This is possible by reinstating the application which is deemed to be abandoned as of the 30 month national phase entry deadline.  As such, it is possible to enter the national phase in Canada up to 42 months from the priority date claimed in the PCT application.

PROVISIONAL PATENT APPLICATIONS

It is possible to file an incomplete application in Canada which consists of, at a bare minimum, the filing fee, description of the invention without claims or abstract, and an indication that the grant of a Canadian patent is sought.  There is then a period of 15 months within which the application can be completed.

PUBLIC DISCLOSURE

There is a 12 month public disclosure grace period granted by Canadian legislation with respect to inventor-derived public disclosures of the invention.  It is possible to file a valid patent application in Canada at any time up to 12 months following the first such disclosure of the invention in the world.

RE-EXAMINATION

At any time after the grant of a patent, anyone, including the patentee, can initiate a re­examination of an application.  Re-examination is limited to the consideration of prior art which was publicly available.

PATENT TERM

The term of a patent which was granted from an application having been filed before October 1, 1989, is 17 years from the date of grant of the patent.  The term of any patent issued on a patent application filed after October 1, 1989 is 20 years from the Canadian filing date.

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Branding & IP Protection in Export Transactions

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Branding & IP Protection in Export Transactions

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As an exporter there are many different legal issues which can arise as you sell your goods or services abroad, from trade finance issues to local warranty and customer protection laws in your export markets.  One of the key concerns for any exporter should involve ensuring that your brands, and other intellectual property (“IP”) assets of your company (patents, etc.), are protected as the geographic footprint of your business expands into new foreign markets.  Laws vary from country to country, so as a company stretches its wings into new markets or territories, an understanding of local IP laws and protections is key.  This article is intended to identify some of the areas in which exporters can avoid or minimize downstream problems with infringement or dilution of their brands or other IP rights.

 

IP Inventory:

One of the most important IP rights for any exporter to protect as you expand business outside of Canada are the trademarks used to identify your products and services.  You invest large amounts of time and resources into building brand awareness and equity and it is important to extend the protection of your brands in your foreign markets .  Thought of another way, what would you do if, upon arrival in a foreign market, you discover that you cannot use your product name because someone else is using the brand in that jurisdiction without your knowledge or consent?  Trademarks or brands which you might use and protect include your business name, product names, logos, slogans and the like.

Just as important is to determine what other categories of proprietary information or intangible rights you have which you may wish to protect.  These might include:

  • Patents, copyrights, trademarks or other registered or unregistered intellectual property rights;
  • Confidential information including customer lists, business strategy and documentation;
  • Business contacts and relationships; or
  • The IP of third parties which you have licensed or use, and for which you might have an extended obligation to protect.

Many of these rights can be protected by registration under the laws of the countries in which you are selling, and in cases where registration is not available other methods including contractual provisions and the like can be employed in an overall strategy.

 

 

It’s YOUR name:

From the trademark perspective, as well as with respect to other IP rights, there are certain steps necessary to maintain ownership and exclusive control.  For example, any in-market use needs to be properly licensed and controlled.  This can become particularly problematic if at some point your local distributor relationship needs to be terminated or re-aligned and the local partner has created by virtue of uncontrolled local use a conflicting or even superior position to the ownership of your trademarks by becoming associated with the brands in the minds of local consumers.  These are all things which can be addressed in your overarching IP strategy and appropriate written agreements.

Another advisable step to take on market entry is to register your trademark or other IP rights in countries of commercial importance to you.  A local trademark registration will often provide a good first line of protection for the defence and enforcement of trademark righs.  Particularly in light of the fact that registration can take months or even years to complete, it is advisable to pursue the process early and budget accordingly as a part of your market entry planning process.  Indeed, this advice is equally applicable across patents, copyrights and other IP rights in addition to trademarks as well.

Is there someone already using a similar trademark in the business, so that your market entry would infringe their rights and place you or your distributor or customers at risk?  Are there competitive patents or other IP positions in the local market than could affect your ability to do export business there – in certain countries a competitor with an alleged infringed IP position may even be able to have your goods stopped at the border by customs authorities.  How you proceed with your market entry is a business decision, but searches for these types of IP information can give you a better ability to fully weight any risk factors related to your IP position on market entry – not only from the perspective of someone else potentially infringing your rights but also from the perspective of avoiding infringing the rights of others.

Local market entry in foreign countries may also entail localized branding (i.e. through use of non-Latin characters, translation, etc.).  Before doing so, consider conducting local trademark availability searches.  Understanding how your proposed brand might be accepted either legally or in terms of local business custom should also be considered since there are many branding horror stories where a company innocently adopts a brand and later finds that it offends the principles, culture or custom of a local population, resulting in a re-brand, apologies, and loss of goodwill.  Trademark search and clearance activities are something that IP legal counsel can assist you with, and they can typically be completed time- and cost-effectively within the scope of your plans.

 

Contract issues:

Are you using a local partner or distributor, shipping directly to end customers, or some other hybrid approach?  Each type of relationship will require a slightly different contractual approach to protect your IP rights, and protect your channel and your customers.  Opinion of local legal counsel, sought at the right time(s) will be key to tackling any concerns.  For example, when establishing a “distributor” channel in a market it is important to seek the advice of independent local counsel, and not simply accept the advice of your proposed local partner since you will want to ensure that the advice you receive is unequivocally targeted to your protection since if the local relationship becomes tenuous or needs to be terminated  you will not want to be in a position where the validity or ownership of your IP rights can be impacted by your (former) in-market partner.  The amount of work which is done on some of these points may be dictated by the nature and size of your IP portfolio and your present or planned market presence, but it is always a sound business decision to consider these issues as part of your overall marketing and export plans.

 

The right IP strategy will fit your business plan rather than dictate it – some of the key business considerations in defining a proper export IP protection strategy include:

  • The countries of interest and the timeline for your market entry plans;
  • The nature of the products or services that you sell, or plan to sell in the future;
  • The type of distribution channel that you have or intend to establish; and
  • An inventory of the IP rights associated with your products or services for sale.

Seeking to register and protect your brands and other IP rights as you expand your business to other countries can protect you over the long term as you add the legal ‘weapons to your arsenal’ to deal with infringements or other problems that might arise.  An investment in careful diligence and IP protection strategies while  setting up an exporting framework proves the old adage that an ounce of prevention prior to market entry can save you a ton of headache later on.