12 Sep
2018

Trademark procedures and strategies: Canada

Moffat & Co Patent & Trademark Agents

Legal framework

The Trademarks Act provides for the exclusive right to the ownership and use of a registered trademark throughout Canada.

The province of Newfoundland is the only province that has a Trademark Register. Before joining Canada in 1949, Newfoundland was a self-governing dominion with its own Trademarks Act. One of the conditions of joining Canada was the absorption of the Newfoundland Trademark Register (NFLD Register) into the Canadian Trademark Register. Section 67 permits an applicant to enter an exclusion for the province of Newfoundland when a NFLD registration is cited on the grounds of confusion. It is possible to transfer a NFLD trademark through the filing of an assignment with the Canadian Trademarks Office. However, only the federal government of Canada has the authority to remove a trademark from the NFLD Register.

Canada is a signatory of the Paris Convention for the Protection of Industrial Property.

Unregistered marks

Unregistered trademarks do not have statutory protection in Canada. The owner of an unregistered mark may enforce its rights, but this necessitates the establishment of a reputation through extensive use of the mark in Canada.

Therefore, the owner bears the burden of establishing those rights in the event that enforcement becomes necessary. Further, the rights of unregistered marks are limited to the geographic region within which the reputation of that mark can be proven.

Registered marks

The following must be submitted with a trademark application:

  • The full legal name of the applicant – if the applicant claims prior use in Canada and there were prior owners of the trademark, all predecessors-in-title must be listed.
  • The applicant’s address – if the applicant resides outside Canada, a domestic representative for service must be appointed.
  • The trademark – if the trademark includes design features then a formal drawing must be filed. When colour is claimed to be a feature of the trademark the formal drawing must be lined for colour or the colour scheme must be described. It is not possible to register a series trademark.
  • A description of the services and goods – the Trademarks Office requires the goods to be grouped into general classes and described using ordinary commercial terms. An application can include both goods and services.
  • A valid basis of entitlement – including:
    • prior use, which requires the applicant to provide the date on which the trademark was first used for each of the general classes of goods and services;
    • proposed use;
    • use and registration abroad, which requires the applicant to file a certified copy of any foreign registration relied upon;
    • having made the trademark known in Canada, which requires the applicant to provide the date on which the trademark was made known in Canada for each of the general classes of goods or services; and
    • a combination of the foregoing bases; it is possible to combine one or more of the above bases of entitlement in one application.
  • Payment of the C$250 filing fee.

A mark is not registrable if:

  • it consists of a word that is primarily merely a name or surname;
  • it is either clearly descriptive or deceptive of the goods or services, whether depicted, written or sounded;
  • it is the name in any language of any of the goods or services it represents;
  • it can be confused with a registered trademark;
  • it is a mark whose adoption is prohibited by Sections 9 (official mark) or 10 (the mark is generic) of the Trademarks Act;
  • it is a denomination whose adoption is prohibited by Section 10.1 of the Trademarks Act (designated plant variety under the Plant Breeders Rights Act);
  • it is in whole or in part a protected geographical indication identifying a wine, where the trademark is to be registered in association with a wine not originating in a territory indicated by the geographical indication;
  • it is in whole or in part a protected geographical indication identifying a spirit, where the trademark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication;
  • it is in whole or in part a protected geographical indication, and the trademark is to be registered in association with an agricultural product or food – belonging to the same category, as set out in the schedule, as the agricultural product or food identified by the protected geographical indication – not originating in a territory indicated by the geographical indication; and
  • it is a mark whose adoption is prohibited by Section 3(3) and 3(4)(a) of the Olympic and Paralympic Marks Act.

The above criteria references Section 9 of the Trademarks Act, which provides for the total prohibition of the adoption or use of any mark that so nearly resembles as to be mistaken for an official mark. Official marks are reserved for use by, among others:

  • any level of government (ie, municipal, city, provincial or federal);
  • governmental bodies (entities that exist for the public good and are directly controlled at least in part, by a one of the levels of government);
  • universities;
  • the Red Cross; and
  • the military.

Official marks can be an absolute bar to the adoption and use of a proposed mark in Canada.

It may be possible to secure the written consent of the owner of an official mark for the use and registration of a new mark. The letter of consent must be filed with the Trademarks Office which would then release the mark for registration.

Procedures

Registration

When an application is filed it is processed and a filing receipt together with proof sheets are sent to the applicant or the designated agent or representative for services and the trademark is entered into the database.

The application is then scheduled for examination which currently takes place nine to 11 months after the application is filed.

The Trademarks Office examines the application on the basis of both:

  • entitlement (possible confusion); and
  • the inherent registrability of the trademark.

In respect of entitlement, a comprehensive search of the IP register will be conducted. An examiner will not search for common law trademarks. If an examiner raises an objection to the application a report will be sent in which the objections are described. The applicant will have six months to respond. This deadline can be extended by six months.

If the applicant claims a foreign registration as a basis of entitlement, and the certified copy has not been filed then, an examination report will issue requesting the filing of a certified copy of the foreign registration and payment of the formality filing fee (C$50). It is possible to obtain multiple extensions of time to file the certified copy.

Once all examination and formality issues are resolved, the application will be approved for publication in the Trademarks Office Journal. A notice will be sent advising the applicant and providing a short period within which any permitted changes or amendments can be made before the application is advertised.

When an application is advertised, any person may commence an opposition.

In the absence of an opposition, a Notice of Allowance will be issued. If there is a claim to proposed use, the applicant will be required to file a declaration of use confirming that the trademark is being used in Canada. The applicant will be able to obtain extensions of time in increments of six months (for a total of three years) to file a declaration of use and pay the registration fee. If the application was filed on the basis of prior use or making known, the applicant will have six months to pay the registration fee. There is no option for an extension of time for paying the registration fee.

A trademark is registered for a term of 15 years and can be renewed for 15-year terms upon payment of the C$350 fee. There is no requirement to provide evidence of use when a trademark is renewed.

A registered trademark is shielded from a use inquiry for a period of three years from the date of registration. After the expiry of the three-year term, any person can request the registrar of trademarks to issue a notice to the owner of a registered trademark that requires the filing of evidence to demonstrate that the trademark has been used in Canada at some time during the three-year period immediately preceding the commencement of the proceeding, calculated from the date of notice.

Opposition

The publication of a trademark application in the Trademarks Office Journal starts the two-month period during which an application can be opposed. The procedure for filing an opposition consists of the following:

  • The opponent files two copies of a statement of opposition with the Opposition Board.
  • If the statement of opposition raises at least one valid ground of opposition then the registrar will serve a copy on the applicant.
  • The applicant will file a counterstatement.
  • The opponent will then file evidence supporting the grounds raised in the statement of opposition and the applicant may request the opportunity to cross-examine the affiant.
  • The applicant will then have the opportunity to file evidence and the opponent may request the opportunity to cross-examine the affiant(s).
  • The opponent may file evidence in reply to the evidence filed by the applicant.
  • Once all of the evidence has been filed and any cross-examinations have been completed, the parties will be invited to file written argument. The arguments are filed with the Opposition Board and then served on both parties simultaneously.
  • Either party may request an oral hearing, the date, time and place of which will be established by the Opposition Board.
  • Once the foregoing stages have been completed, the Opposition Board will render a decision in writing.
  • Either party can appeal the Opposition Board’s decision within two months by filing a notice of appeal with the Federal Court of Canada.

Section 38 of the Trademarks Act establishes the following grounds that may be raised in a statement of opposition to a mark:

  • The application does not conform to the requirements of Section 30 of the Trademarks Act. This ground is used to challenge an application because it contains technical deficiencies.
  • The trademark is not registrable pursuant to Section 12.
  • The applicant is not the person entitled to own a registration of the trademark.
  • The trademark is not distinctive.

For example, a trademark may be refused if it is proven that:

  • it is confusingly similar to another trademark that was used by another party before the date of entitlement claimed by the published mark; or
  • the applied-for trademark has become generic.

Removal from register

Trademarks Office procedure: The registrar of trademarks may at any time after a trademark is registered commence proceedings to compel a trademark owner to file evidence demonstrating that the subject trademark is in use in Canada. If the trademark is not in use the registration may be cancelled.

At any time following three years after the date of registration, any person can request the registrar of trademarks to serve notice on the owner of the trademark that it must file evidence demonstrating that the trademark has been used in Canada within the three-year period immediately preceding the date of the registrar’s notice. Failure to file evidence could result in the registration being cancelled or the goods and services being restricted to those goods or services that have been used.

Federal Court procedure: An action can be taken to the Federal Court to have a registered trademark cancelled if:

  • it is abandoned;
  • it is not or was not distinctive of the owner;
  • the applicant is not the rightful owner;
  • it was not registrable; or
  • the owner intentionally or unintentionally made factual errors when the application was pending before the Trademarks Office.

Enforcement

A trademark owner can take action with the Trademarks Office to enforce its rights by commencing opposition proceedings. An opposition can be commenced by the owner of both registered and unregistered trademarks.

Trademark owners can also take action to enforce their rights using the federal and provincial courts of Canada.

Ownership changes and rights transfers

A trademark, whether registered or unregistered, can be assigned. There is no statutory requirement to record an assignment at the Trademarks Office for a registered trademark or a pending application; however, it is strongly recommended that owners maintain up-to-date information on the register.

Related rights

The most common overlap is between copyright and trademarks. The inclusion of original artwork as a component of trademark logos, labels and advertising can be complex. It is imperative that trademark owners take the appropriate steps to ensure that they own the copyright and that the author or creator has waived their moral rights.

Online issues

A trademark owner is free to use its trademark in the normal course of trade, which often includes use online. All of the laws applicable to the use of a trademark in print, packaging and advertising apply to the use of a trademark online.

The Canadian Internet Registration Authority is the Canadian domain name authority that resolves disputes regarding the unlawful adoption or appropriation of trade names or trademarks as domain names registered and operating within Canada.

Moffat

Moffat & Co Patent & Trademark Agents

715-11 Holland Avenue

PO Box 2088, Station D

Ottawa ON K1P 5W3

Canada

Tel+1 613 232 7302

Fax+1 613 235 2508

Web www.moffatco.com

James R Palmer

James R Palmer
Partner
[email protected]

James R Palmer is a registered trademark agent and a partner of Moffat & Co. He has more than 30 years of experience in all areas of intellectual property; however, his area of specialty is trademarks, including domestic and foreign trademark practices and prosecution, including filing and prosecution of applications, oppositions, Section 45 use inquiry proceedings, availability searches and opinions, portfolio management and trademark and branding strategy.

Mr Palmer has participated in discussion panels, presented papers on trademarks and related topics and mentored trademark agent trainees. He is a fellow of the Intellectual Property Institute of Canada (IPIC), a former examiner and chair of the IPIC Trademark Agent Examination Committee and has served as councillor and president of the IPIC Council.