Key concepts for applicants and attorneys.

New-ish changes to Canadian Trademark Law.

Madrid Protocol.

The Madrid Protocol became effective in Canada in June 2019.  It will take some time to ‘work out the kinks’.

Canada is a substantive examination regime, and as a result, regardless of whether you filed via the Madrid system or directly you should expect to receive Examiner’s Reports (office actions) that require responses to establish your entitlement to registration of the mark.  Applicants must respond to these Examiner’s Reports in a timely and complete manner, which requires knowledge of the nuances of Canadian trademark law and practice.

We can help!  Learn more about responses to examiner’s reports here.

Nice Classifications.

Canada commenced using the Nice classifications in June 2019.  However, Canada continues to require that:

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.).

All goods and services on renewal applications must be grouped according to the Nice classifications.  Learn more about renewals here.

Key Concepts in 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).

Deadlines and claiming priority

There is no deadline for when a trademark application must be filed in Canada.   It is usually possible to carry on business without a registration or pending application.

Usual Paris Convention rules apply to claiming priority: the Canadian application must be filed within 6 months of the priority filing which must be the first 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).  More about claiming priority is found here.

Confusion

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. 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.

Learn more about confusion here.

Use

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.

Learn more about use here.

Association

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)

Registrability.

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 (if filed online).  A trouble-free application usually proceeds from application to registration in 12-18 months.

Effective January 1, 2024 the government fee will be $458 for the first Nice class, and $139 for each additional class.

Canada is a ‘substantive examination’ trademark regime even though it is 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.

Examination.

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.

Opposition.

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 initial period of 10 years, and be renewed for successive 10 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.

Renewal.

A Canadian trademark registration is valid for 10 years, and can be renewed upon payment of the renewal fee ($350) for successive 10 year terms indefinitely.  It is not necessary to file any evidence of use in order to renew a Canadian trademark registration.  Learn more about renewal here.  Issues of lack of use are dealt with under separate proceedings (discussed below).

Cancellation of a registered trademark.

A registered Canadian trademark may be cancelled removed from the register for two reasons:

• non-use, and
• improper registration.

Learn more about cancellation here.

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.

Learn more about assignments and transfers here.