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If you file a Canadian trademark application, and especially if you have filed in Canada pursuant to the Madrid protocol, it is quite likely that you will receive a ‘provisional refusal of protection‘.

This provisional refusal of registration of the trademark will be in the form of an examiner’s report or office action from the trademark examiner at CIPO (the Canadian Intellectual Property Office).

These provisional refusals may be ‘total’ or ‘partial’ depending on whether they apply to the entire Canadian trademark application or only certain aspects of it.

The examiner will identify the grounds under Canadian trademark law that registration of the trademark is denied.

The most common basis for refusal are, consistent with traditional Canadian trademark practice that –

  • the proposed trade mark is not registrable because it is not a trademark
  • the proposed registrant is not the person entitled to register the trademark
  • the proposed trademark is confusingly similar to applications or trademarks already on the trademark’s register for the same or similar goods or services.

Provisional refusals because the trademark is confusingly similar to a prior trademark application or registration do not depend on the proposed trademark being identical to a prior application or registration, nor, to the prior application or registration being on identical goods or services.  In Canada, the test for confusion is much broader than that – it is, whether there is a likelihood of confusion as to the source or origin of the goods in the mind of the ordinary consumer.  Learn more about confusion in Canadian trademark law here.

We can help.

Provisional refusals are not fatal.  Often they can be overcome either by narrowing the scope of the goods/services in the application or by demonstrating that the trademark applied for is not confusing similar to the cited marks – either because they are sufficiently different from each other as not to be confusingly similar, or because the ordinary consumers for the goods/services are likely to be quite different.

Contact us if you have received a provisional refusal of your trademark application in Canada for an assessment of the prospects for overcoming the examiner’s objection.

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