Key Concepts:
Application to registration explained.
This page contains a substantial amount of information directed at ‘the non-specialist practitioner’ (eg. a trademark practitioner from outside Canada). The key material is found below, with links to the more detailed information. If you cannot find what you are looking for please contact us.
If you are new to trademarks, start with
Of course, we are here to guide you step by step. This information is provided simply to give you background and understanding.
Table of Contents
- Unusual Features of Canadian Trademark Law
- Nice.
- Madrid
- Registration and Use Abroad
- Deadline for Filing
- Key Concepts in Canadian Trademarks
- Confusion
- Use
- Association
- Registrability
- Entitlement to Register
- First to Use not First to File
- The Application Process
- Application
- Examination
- Opposition
- Registration
- After Registration
- Renewal
- Removal: cancellation for non-use; cancellation for improper registration
- Transfer of trademark rights: trademark assignments
- Enforcement of Trademark Rights in Canada
Unusual Features of 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).
Madrid Protocol.
The Madrid Protocol became effective in Canada in June 2019. It will take some time to ‘work out the kinks’.
Nice Classifications.
Canada commenced using the Nice classifications in June 2019. It will also take some time to work out the details in classification.
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.).
Deadline for filing a trademark in Canada
There is no deadline per se for when a trademark application must be filed in Canada. However, in accordance with the Paris Convention, in order for your Canadian trademark application to claim priority (ie. to effectively back-date the “application date”) from an earlier trademark filing outside in the United States or other country outside Canada, 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).
Key Concepts in Canadian Trademark Law
In this section, we discuss several key principles of Canadian trademark law: registrability and entitlement to register, and thus confusion and descriptiveness, and use. These principles are highly relevant to the assessment of the trademark application during the application process, but also in any litigation related to enforcement (infringement) or cancellation.
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. Detailed information on confusion in Canadian trademarks law can be found here. 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.
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.
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.
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.
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. A trouble-free application usually proceeds from application to registration in 12+ months.
Canada is a substantive examination trademark regime. Every trademark application undergoes a full review by an examiner at the Canadian Intellectual Property Office and typically receives one or more Examiner’s Reports outlining any issues to be addressed. If the examiner’s objections cannot be resolved, the application will be refused.
If the examiner allows the application, it is then published for opposition. Only after the opposition period has expired—and any oppositions have been successfully resolved, if applicable—will the trademark proceed to registration.
View the Canadian Trademark Process Flowchart in PDF here.
Fundamental requirements for registration.
For an applicant to register a mark in Canada:
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 can 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 for successive 10-year terms indefinitely. It is not necessary to file any evidence of use to renew a Canadian trademark registration. Issues of non-use are dealt with under separate proceedings (discussed below).
Removal of a registered trademark
A registered Canadian trademark may be removed from the register for two reasons:
- non-use, and
- improper registration.
Cancellation for Non-Use
A Canadian trademark registration may be cancelled if, at any time three years after the registration date, the owner has not used the trademark within the previous three years.
A request for removal may be filed by a third party or initiated by the Trademarks Office itself, often to clear “dead wood” from the register. The requesting party files a request and pays the prescribed government fee. No further evidence may be submitted by the party that initiated the proceeding.
The registrant must then submit evidence demonstrating use of the trademark. If sufficient evidence is not provided, the registration will be cancelled. Because proving trademark “use” involves technical evidentiary requirements, owners commonly retain legal counsel to respond to non-use proceedings.
Learn more about these cancellation for non-use proceedings here.
Cancellation for Improper Registration.
A registered Canadian trademark may be cancelled and removed from the register (technically called “expunged”) if, at the time of registration, the trademark was not registrable or the applicant was not the person entitled to apply to register it. These proceedings are adversarial in nature. The litigation must be conducted in the Federal Court of Canada which is the sole court with jurisdiction to order an amendment to the Register of Trade-Marks.
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.
There are very few formalities required for effective trademark assignments in Canada. An assignment must be in writing and signed by the assignor. They do not need to be notarized. They do not need to be witnessed, although that is good practice. They do not need to be signed (or accepted) by the assignee, although that too is good practice.
To register an assignment of a Canadian trademark on the Register of Canadian trademarks it is not necessary to file the original assignment. Therefore, we do not require original assignment documents from you – a scanned version of the trademark assignment is sufficient. In fact, all that the Canadian trademarks office requires is ‘evidence’ of the assignment, and thus even the assignment per se is not absolutely required (although best practice is to file the trademark assignment itself, rather than indirect evidence that an assignment has taken place.)
Transfers of trademarks between separate corporate entities within one corporate group should be properly documented by way of a signed assignment, and this assignment recorded on the trademark Register.
