Canadian Trademark Prosecution for Foreign Associates
This page is intended for foreign trademark agents and attorneys seeking a Canadian associate for trademark prosecution matters before the Canadian Intellectual Property Office. We welcome inquiries from foreign firms and act as Canadian associate counsel on an ongoing basis for a number of international IP practices.
The Canadian Trademark System — Key Points for Foreign Associates
Governing legislation: The Trademarks Act, R.S.C. 1985, c. T-13, as substantially amended by the Intellectual Property Laws Amendment Act, 2018 (in force June 17, 2019). Examining authority: The Canadian Intellectual Property Office (CIPO), Trademarks Branch, Gatineau, Quebec. Official languages: English and French. Applications may be filed in either language. Examination correspondence is conducted in the language of the application. Membership: Canada is a member of the Paris Convention, the Nice Agreement, and — since June 17, 2019 — the Madrid Protocol.
Filing Routes
Direct national filing: A Canadian trademark application may be filed directly at CIPO. A Paris Convention priority claim may be made within 6 months of the foreign priority filing date.
Madrid Protocol: Canada joined the Madrid Protocol on June 17, 2019. International applications designating Canada are examined under Canadian law. The examination standard and grounds for refusal are the same as for direct national filings. Foreign associates should note that the Canadian examination process can be lengthy, and Madrid designations are subject to the same procedural requirements as direct filings, including the requirement to respond to Examiner’s Reports within prescribed deadlines.
Key Procedural Points
No use requirement for filing: Since the 2019 amendments, use of the trademark in Canada is not required as a basis for filing or for registration. A Canadian trademark application may be filed on the basis of proposed use, actual use, or registration abroad — or any combination. There is no longer a declaration of use requirement prior to registration.
Nice Classification: Canada adopted the Nice Classification system in 2019. Applications must identify goods and services using Nice Classification. CIPO applies the Nice Classification strictly; overly broad or vague identifications of goods and services will be objected to on examination.
Examination: Canadian examination is substantive. The Examiner reviews the application for compliance with the Trademarks Act, including: the registrability of the mark (distinctiveness, descriptiveness, deceptiveness, prohibited marks, and the like); confusion with registered marks and pending applications; and technical compliance of the application. Examiner’s Reports are issued in writing; responses are due within the prescribed deadline, currently 4 months from the date of the report, extendable on request in appropriate circumstances.
Confusion: The Canadian confusion analysis is governed by section 6(5) of the Trademarks Act and considers: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the goods and services and the nature of the trade; and the degree of resemblance between the marks in appearance, sound, and the ideas suggested by them. All surrounding circumstances are considered. The operative question is whether a consumer, in a hurry and with an imperfect recollection of the prior mark, would be likely to be confused as to the source of the goods or services.
Distinctiveness objections: A mark that is not inherently distinctive — because it is clearly descriptive, deceptively misdescriptive, primarily merely a name or surname, or the name of a place of origin — may be refused registration or required to be disclaimed in part. Acquired distinctiveness through use can overcome some of these objections, but the evidentiary burden is meaningful.
Official marks: Section 9 of the Trademarks Act provides for official marks — marks adopted and used by public authorities in Canada. Official marks are not registered in the traditional sense but are extraordinarily broad in scope: they can be cited against pending applications regardless of the goods or services involved, and they do not expire or become vulnerable to non-use attack. Official marks are a distinctive and sometimes problematic feature of Canadian trademark law with no direct equivalent in most other jurisdictions. Foreign associates encountering an official mark citation for the first time should seek Canadian counsel promptly.
Advertising and opposition: Once approved by the Examiner, a trademark application is advertised in the Trademarks Journal for a 2-month opposition period. Any person may oppose the application within that period. Opposition proceedings are conducted before the Trademarks Opposition Board and can extend over several years in contested matters.
Non-use expungement: A registered trademark that has not been used in Canada in connection with the registered goods or services within the preceding 3 years is vulnerable to expungement proceedings initiated by any person. The registered owner bears the onus of demonstrating use. Non-use expungement is both a useful offensive tool in clearing conflicting marks and a meaningful risk for rights holders who allow Canadian registrations to go unused.
Term and renewal: A Canadian trademark registration is valid for 10 years from the date of registration and is renewable for further 10-year periods indefinitely, on payment of the prescribed renewal fee.
Assignments and Recordals
Trademark assignments should be recorded at CIPO. An unrecorded assignment is valid as between the parties but may affect enforceability against third parties. Recordal requires submission of a copy of the assignment document and payment of the applicable fee. Notarization or legalization of the assignment document is not required for recordal purposes.
Prosecution Cost Estimates
We are pleased to provide cost estimates in advance of undertaking any prosecution matter. Estimates are provided on the basis of the anticipated scope of work and are updated as the file develops. We work on an hourly rate basis for prosecution matters, with disbursements — including CIPO official fees — invoiced at cost.
Contacting Us
We welcome inquiries from foreign trademark agents and attorneys seeking Canadian associate counsel. We are pleased to provide status reports, procedural guidance, and cost estimates on request. Please direct inquiries to cfurman@furmanip.com or by telephone at +1 (306) 992-0740.