Canada: New Legislation Presents Fresh Challenges for Applicants

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In summary

On 17 June 2019, Canada’s trademark laws changed significantly with the introduction of new legislation. Since that time, practitioners, brand owners, the courts and the Canadian Intellectual Property Office itself have adapted to these changes and the challenges they pose. This chapter highlights recent developments in the current examination landscape to provide some guidance on how to streamline and make the most of your applications and obtain better protection, faster.


Discussion points

  • Types of trademarks registrable in Canada and the applicable standards
  • Establishing an entitlement to registration
  • Current examination environment and tips for streamlining the process
  • Contrasting registered marks with unregistrable marks
  • Post-registration matters

Referenced in this article

  • Beijing Judian Restaurant Co Ltd v Wei Meng, 2022 FC 743
  • Canadian Intellectual Property Office: ‘Requests for expedited examination’; ‘Extensions of time in Examination and to respond to a section 44.1 notice’; ‘Non-traditional Trademarks’
  • Energizer Brands, LLC v The Gillette Company, 2018 FC 1003
  • Her Majesty the Queen in Right of Ontario as represented by the Minister of Energy v Quality Program Services Inc, 2020 CanLII 74020
  • Ontario (Energy) v Quality Program Services Inc, 2020 FCA 53
  • Quality Program Services Inc. v. Canada, 2018 FC 971
  • Trademarks Act, RSC 1985 c T-13

Introduction

As of 17 June 2019, Canada formally ratified the Singapore Treaty and the Nice Agreement[1] and officially became a contracting state to the Madrid Protocol. Since then, the Canadian Intellectual Property Office (CIPO), practitioners and agents alike have worked to adapt to the new regime and its associated challenges. This article provides an overview of these developments and discusses some of the principles underlying Canada’s trademark law.

Registrable trademarks

Canada is a first-to-use jurisdiction. The principal law is the Trademarks Act[2] (the Act) and its associated regulations, which are administered by CIPO. The Act broadly defines a ‘trademark’ as ‘(i) a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or (ii) a certification mark’.[3]

As a result of the 2019 amendments to the Act, Canada explicitly recognises a broad array of trademarks, including non-traditional marks, as shown in this screenshot from CIPO’s online filing system:

This list is not exhaustive, and provided a ‘sign’ meets the definition of ‘trademark’ in the Act, then it could be registrable; however, this does not mean that all such signs are registrable. Some marks are inherently unregistrable, while others may be unregistrable because of existing third-party marks. For instance, even though distinctiveness has been a cornerstone of Canadian trademark law for decades, the 2019 amendments introduced an explicit prohibition against registering non-distinctive marks[4] and empowers CIPO to object to registration of a trademark if, ‘on a preliminary view’, it is not inherently distinctive.[5] Section 12 of the Act contains additional prohibitions including, for instance, prohibiting registration of marks that are names or surnames or are marks that are, in English or French, clearly descriptive or deceptively misdescriptive ‘of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin’.[6]

These prohibitions are not absolute: a trademark can still be registered if the applicant can prove that, at the date of filing the application, the mark acquired distinctiveness through extensive use and advertising.[7] This is a high threshold to meet, and evidence of use must pre-date the filing of the application by at least three years. It must also extend to every province and territory in Canada, and the resulting registration will be geographically limited to regions where the applicant showed use (ie, proved acquired distinctiveness). Non-traditional marks in particular face extraordinarily high hurdles, as most can be registered only by proving acquired distinctiveness through the filing of extensive evidence.

Section 9 of the Act sets out a uniquely Canadian category of marks that are generally referred to as ‘prohibited marks’ or ‘official marks’. These are marks that are adopted by certain public authorities and government bodies and are afforded broad protection. The Act prevents any person from adopting ‘in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely be mistaken for’ a prohibited mark. Unlike other trademarks, official marks are not limited to specific goods and services and need not be distinctive. Official marks do not undergo the same rigours of examination as ‘regular’ trademarks – they are not assessed against other active marks in Canada nor are they examined for inherent registrability. As long as the applicant meets the various criteria for being a public authority and has adopted and used the mark in some public-facing manner, the application will be permitted. Once advertised, an official mark essentially freezes the rights of incumbent third parties, and any third party that wishes to register a mark that ‘so nearly resembles’ an official mark will be refused by CIPO without the consent of the owner.

Recent case law has put an important limitation on this broad protection. In Quality Program Services Inc v. Canada,[8] the Ontario Ministry of Energy adopted, used and subsequently obtained an official mark for emPOWERme despite the fact that the plaintiff owned a registration for EMPOWER ME covering energy awareness, conservation and efficiency services. The plaintiff sued the Ministry for infringement, and though the Ministry attempted to rely on its official mark as a shield to protect it from liability, the Federal Court of Canada (FC) allowed the plaintiff’s claim and concluded that an official mark does not grant public authorities immunity from claims under the Act. This decision was upheld by the Federal Court of Appeal,[9] and the Supreme Court of Canada refused the Ministry’s request for leave to appeal.[10]

Entitlement

Applicants are entitled to registration if they are the first to file in Canada and no one else, prior to the filing (or priority) date, has used or made known a confusing trademark in Canada or used a confusing trade name in Canada that has not been subsequently abandoned.[11]

As of 2019, an applicant can obtain a registration without claiming use but must either (1) have actually used or (2) have a bona fide intention to use the applied-for mark with all the listed goods or services on or before the filing date. Without such a use or intention, the application could be successfully opposed and any resulting registration expunged through a summary cancellation or expungement proceeding. Forthcoming changes will introduce a requirement that a registrant must prove actual use before commencing legal action for infringement or depreciation of goodwill. At the time of writing, these changes are not yet in force but are likely to come into effect within the next year or two.

Prosecution process

Owing to a combination of factors, there is an extensive backlog at the Examination Branch of CIPO. It can take 36 months or more from the filing date to first examination. The following section sets out the general requirements for an application and some tools applicants can use to speed up the process.

Application requirements

All applications must contain certain mandatory information, including the applicant’s name and address, a representation or description of the mark, and the associated goods or services classified according to the Nice Classification.[12] Although applications can still be filed on paper, electronic filing can expedite CIPO’s processing of the application, reduce government filing fees and simplify file wrapper management.

Additional requirements vary depending on the type of trademark. For instance, an application for a word mark must set out the mark in standard characters together with a statement that the mark is to be registered in standard characters. If any design mark is filed in colour, then a colour claim is mandatory. If a colour claim is not intended, the design should be in greyscale.

There are additional requirements for certain types of non-traditional marks.[13] As mentioned, they are also subject to proof of acquired distinctiveness but to date, the standards for these kinds of marks are not clear and precious few applications have progressed beyond the preliminary examination. The following table shows the current state of the active applications for non-traditional marks filed since the new rules were introduced in 2019:

Trademark typeFormalisedSearchedApprovedRegistered
Colour per se22900
3D35012335
Position212451322
Hologram31900
Motion33000
Sound47501
Taste792300
Scent19700
Texture792900
Mode of packaging1294102

The table is a stark illustration of the high standards required to register non-traditional marks and the current examination backlog at CIPO. It is hoped that the body of case law surrounding non-traditional marks will improve in the next few years.

An application for a certification mark must include particulars of the defined standard and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services with which the certification mark is used or proposed to be used.

All applications must also be accompanied by a filing fee, the amount of which corresponds to the number of relevant Nice classes. Canada permits and even encourages multi-class applications (rather than multiple single-class applications) by reducing the fees for each additional class.

Pre-examination

Another uniquely Canadian requirement is that not only must goods and services be properly grouped according to the international Nice Classification, they must be described in ‘ordinary commercial terms’. International applicants are often required to revise their specifications, sometimes extensively, from what they may have registered in other countries.

CIPO maintains a list of pre-approved terms for goods and services (the List) and strongly promotes its adoption wherever possible. If applicants select from the List when preparing their applications, CIPO will expedite the examination from 36 months to between 12 and 18 months, and applicants can avoid technical objections regarding the description or classification of their goods or services as the application will essentially bypass that examination.

Although the List is not entirely comprehensive, CIPO has expanded it significantly in recent years; moreover, CIPO entertains requests from applicants to add to the List. This is a useful tool to reduce examination timelines when an applicant’s goods and services – despite being sufficiently specific – were not on the List at the time of filing, rendering the application ineligible for expedited examination.

Under a practice introduced in 2022, CIPO sends applicants a pre-assessment letter before examination. These letters, automatically generated by an artificial intelligence tool, advise applicants that their classification or specification is not acceptable and invites them to make an amendment according to the List. Pre-assessment letters do not obviate formal examination; rather, an examiner will consider whether the goods and services are properly classified or specified.

In the following circumstances,[14] an applicant can make a formal request for expedited examination, supported with affidavit evidence: a registration is required (1) for enforcement purposes, (2) to combat counterfeit goods at the Canadian border, (3) to prevent the applicant from being disadvantaged in online marketplaces, and (4) to preserve a priority claim following a request from a foreign intellectual property office. Recent experiences with this practice have been positive – in some instances, expedited examination takes place within weeks, or even days, of filing the formal request. So, by providing compelling evidence of urgency, it is possible to dramatically accelerate examination of Canadian applications.

Substantive examination

Substantive examination is an assessment of whether a mark is registrable under both relative and absolute grounds. If barriers to registration are identified, the examiner will issue an examiner’s report and invite arguments or amendments to be submitted within six months. In 2021, CIPO rescinded the general availability of extensions to reply to examiners’ reports; now, extensions are only available in limited circumstances, including a recent change in counsel, pending assignment, active opposition proceedings, consent negotiations with an official mark owner, compiling evidence to overcome a non-distinctiveness objection, and circumstances outside the applicant’s control.[15]

If the response fails to overcome the examiner’s objections, the examiner will issue a further office action. If the second response fails to respond to the second office action, the examiner may, but not necessarily will, issue a refusal, at which point the applicant must either give up or commence an appeal of the decision to the FC. Alternatively, if an applicant fails to file a timely response, CIPO will issue a notice of default providing a two-month grace period, after which, absent a timely response, the application will be abandoned.

Although third party petitions or interferences during examination are not available, Canada now permits incumbent trademark owners to flag their rights to CIPO during examination. By filing a notification of third party rights form, one can identify potentially confusing applications or registrations to the examiner tasked with a particular application, which can help prevent problematic applications from being approved.

Approval, advertisement and registration

Once the applicant addresses all objections raised during examination, CIPO approves the application and then advertises it in the Trademarks Journal for opposition from third parties for two months. If the application is not opposed, or if the applicant is successful in an opposition, it proceeds to registration and CIPO will send an electronic certificate of registration. If the application was filed after 17 June 2019, there is no fee for registration.

Post-registration matters

Rights conferred by registration versus unregistered trademarks

A registration confers on the registrant the exclusive right to use the trademark throughout Canada in association with the specified goods and services[16] and the right to prevent unauthorised third parties from using the same mark or any ‘confusingly similar’ mark.[17] Although a detailed discussion of confusion is outside the scope of this article, a confusion analysis generally requires consideration of all the surrounding circumstances, as well as five specific factors set out in section 6(5) of the Act, including the degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them.

Another unique feature of Canadian trademark law is section 22 of the Act, which prohibits any person from using a registered mark of another ‘in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto’.[18] This section has been successfully used in parody cases, comparative advertising cases and, more recently, the FC said that the defendant’s trademark need not even be identical to the registered mark: use of the phrases ‘the next leading competitive brand’ and ‘the bunny brand’ by The Gillette Company in comparative advertisements as a thinly veiled reference to ENERGIZER-branded batteries was found to be a depreciation of the goodwill.[19] The Supreme Court of Canada, in obiter, also suggested that the breadth of the wording of section 22 may even ground a dilution claim.

Registrations are tools to combat counterfeiting – owners of registered trademarks (and copyrights) can file requests for assistance from the Canada Border Services Agency, advising officers of the owners’ trademark rights so that they can inspect and detain counterfeit goods as they enter into Canada.

Unregistered trademark owners have rights but they are subject to two important limitations that do not apply to registered marks. First, enforceability is limited to the tort of passing off, which is both recognised by the common law and enshrined in section 7(b) of the Act. To establish passing off, a trademark owner must prove that the mark possesses goodwill through use. This can often be a high threshold, requiring extensive evidence of sales, advertising, promotional activities, awareness of the brand in relevant trades and market presence. Second, an extension from the first limitation is that unregistered trademark rights are geographically limited to the region or regions where the mark owners can prove goodwill. In other words, unregistered trademark rights are not inherently nationwide rights in the same way as registered trademarks.

Finally, amendments to the Quebec Charter of the French Language, coming into effect on 1 June 2025, will require non-French trademarks appearing on products and outdoor signage to be registered to avoid translation to French. Even then, if a non-French registered mark contains ‘generic terms or descriptions of the product’, those elements must be translated into French, and non-French registered marks on outdoor signage must be accompanied by text to make French ‘markedly predominant’.

Amendment of the register

Registered trademark rights are not immutable. They can be revoked or limited by voluntary withdrawal, failure to renew, summary cancellation for non-use and expungement. The first two mechanisms are administrative (and self-evident), while the second two involve inter partes proceedings.

Summary cancellation for non-use is one of the primary means by which the Act implements Canada’s use requirements to maintain trademark rights. On or after the third anniversary of a trademark registration, any person can request that the registrar issue a notice under section 45 of the Act, requiring a registrant to prove, by way of affidavit, use of each of the goods and services listed in the registration within the three-year period preceding the date of the notice, or provide exceptional circumstances justifying non-use. The registration will be cancelled or amended to remove any goods or services that were not shown to be used. These proceedings are generally straightforward, and although the requesting party cannot cross-examine on the affidavit, both parties are permitted to make written arguments and oral submissions before the Trademarks Opposition Board. At the conclusion of the proceeding, the Board will issue a decision to maintain or strike the registration, either partially or entirely.

Expungement proceedings are more robust mechanisms to attack a trademark registration and involve full litigation proceedings before the FC, which has the exclusive jurisdiction to amend the register.[20] In general terms, a registration can be expunged because it was not registrable, the applicant was not entitled to registration, the subject mark was abandoned or is no longer distinctive, or the application was filed in bad faith.[21] A detailed discussion of court proceedings is outside the scope of this article, though the bad faith ground in particular bears mentioning not only because it was newly introduced in 2019, but it received its first detailed judicial considering only in 2022. In Beijing Judian Restaurant Co Ltd v Wei Meng, the FC expunged a 2019 registration for a design mark in association with ‘restaurant services; take-out restaurant services’ and ‘beer’ when it was determined by the FC that it was registered to extort money from the plaintiff and for no legitimate purpose.

Conclusion

Canada’s trademark environment is a dynamic one, and the changes and challenges wrought by the 2019 amendments continue to work themselves out; however, there are many tools and resources available to maximise brand holders’ rights with proper guidance and knowledge. This article will be updated annually as these issues continue to develop.

* The authors would like to extend their gratitude to Dakota Bundy, student-at-law with Cassels Brock & Blackwell LLP, for her assistance in preparing this article.


Footnotes

[1] International Classification of Goods and Services for the purposes of the registration of marks (Nice Classification) issued by the World Intellectual Property Organization, at (ix) et seq.

[2] R.S.C. 1985, c. T-13 (TMA).

[3] ibid., s 2.

[4] ibid., s 37(1)(d).

[5] ibid., s 32(1)(b).

[6] See ibid., s 12(1).

[7] ibid., s 12(3).

[8] 2018 FC 971.

[9] Ontario (Energy) v Quality Program Services Inc, 2020 FCA 53.

[10] Her Majesty the Queen in Right of Ontario as represented by the Minister of Energy v Quality Program Services Inc, 2020 CanLII 74020.

[11] TMA, s 16.

[12] International Classification of Goods and Services for the purposes of the registration of marks (Nice Classification) issued by the World Intellectual Property Organization, page 1 et seq.

[14] Canadian Intellectual Property Office, ‘Requests for expedited examination’ (3 May 2021) (https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/trademarks/practice-notices/requests-expedited-examination).

[16] TMA, s 19.

[17] ibid., s 20(1).

[18] ibid., s 22.

[19] Energizer Brands, LLC v The Gillette Company, 2018 FC 1003.

[20] TMA, s 57(1).

[21] ibid., s 18(1).

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