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Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Entitlement to registration between competing marks that were both in use in Canada before filing is determined on a first-to-use basis. Where the determination of entitlement to registration is between a mark that was in use before filing and a trademark that was proposed to be used as the time of filing, the proposed use mark may have entitlement if it was filed – or has a priority date – before the first use date claimed by the competing mark.
However, the Canadian Intellectual Property Office (CIPO) does not apply these entitlement rules automatically. CIPO processes applications on a first-to-file basis, as CIPO considers it the parties’ responsibility to enforce the entitlement rules by way of opposition.
What legal protections are available to unregistered trademarks?
A trademark application can be opposed based on the opponent’s prior use in Canada of a conflicting mark, even if the opponent never registered that mark.
In the marketplace, unregistered (common law) marks are primarily protectable through a cause of action called ‘passing off’. Brand owners sue for passing off, either before the superior courts or the Federal Court. The elements of passing off are:
- the existence of goodwill/reputation in the trademark;
- an intentional or unintentional misrepresentation likely to deceive or confuse the public; and
- actual or potential damage to the plaintiff.
Passing off is subject to certain limitations:
- While the protections afforded by registration are – in most cases – inherently nationwide, passing off can be established only if the plaintiff can evidence goodwill/reputation in its trademark in the geographic area of Canada where the defendant was using the confusingly similar mark. In other words, common law trademarks rights are not inherently nationwide and may be restricted geographically.
- A trademark registration affords the mark owner presumptive proof of ownership; there is no presumption of ownership of common law rights, meaning that a plaintiff without a registration must establish their rights with evidence when they sue, which tends to increase the cost and complexity of such lawsuits.
- The Trademarks Act protects registered marks from use by others that would likely depreciate the value of the goodwill attaching to the registered marks; unregistered marks do not benefit from this protection from depreciation.
How are rights in unregistered marks established?
A plaintiff seeking to enforce an unregistered trademark must provide evidence of its rights in court. Typical forms of evidence include:
- evidence of the sale of goods and provision and advertising of services in association with the mark;
- evidence of promotional activities aimed at increasing awareness of the mark and of the associated goods or services; and
- evidence in the form of surveys and other marketplace research (eg, magazine and newspaper printouts featuring the mark) aimed at establishing that the mark enjoys goodwill/reputation within a specific geographic area of Canada, if not all of Canada.
Are any special rights and protections afforded to owners of well-known and famous marks?
Famous marks are not explicitly recognised in the Trademarks Act. However, the act does contain certain provisions that can help protect famous marks:
- The Trademarks Act protects registered marks from use by others that would be likely to depreciate the value of the goodwill attached to the registered marks – this protection is only available if the registered mark in question has significant goodwill attached to it, which is the case for famous marks.
- The test for trademark confusion contained in the Trademarks Act is formulated such that confusion can potentially arise even if the marks at issue pertain to goods or services that are dissimilar, which is to the benefit of famous mark holders.
- The extent to which a plaintiff or opponent’s mark has become known is a factor in the confusion analysis; more fame tends to increase the likelihood of confusion.
- Fame in Canada arising from trademark use in other jurisdictions can sometimes be enough to oppose a third-party trademark application in Canada, even if the opponent has not used its mark in Canada. Under the current Trademarks Act, the fact that a mark has become well known in Canada as a result of spill-over advertising can, in certain circumstances, entitle its owner to registration in Canada.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign trademark registrations are not enforceable in Canada. That said, foreign registration is relevant in two contexts at present. First, under the Trademarks Act as it stands now, a trademark applicant is required to select on what bases it claims entitlement to register its mark in Canada. The bases include:
- prior use of the mark in Canada;
- proposed future use in Canada; and
- use and foreign registration of the mark.
The second context where foreign registration is relevant pertains to marks that clearly describe – or deceptively mis-describe – their associated goods or services and marks that are primarily merely the name or the surname of an individual. Such marks are not generally inherently registrable, but this issue can be overcome with evidence going to the marks’ distinctiveness. Owners of marks registered abroad can currently claim the benefit of a provision of the Trademarks Act that affords a lighter evidentiary burden in this respect.
However, the Trademarks Act is being amended. Once the amendments come into force, applicants will no longer be required to claim registration bases, nor will the amended act offer favourable treatment to marks registered abroad. These changes are currently expected to come into effect in 2018 or early 2019.
What legal rights and protections are accorded to registered trademarks?
Registration generally affords the owner of the trademark the exclusive right to use the mark throughout Canada in association with the goods or services for which the mark is registered; no other party may use a confusingly similar mark. However, where a clearly descriptive mark or a mark that is primarily merely a name or surname was registered based on evidence of acquired distinctiveness, that registration will be restricted to the defined territorial areas in Canada (eg, the provinces) in which the applicant was able to show that the trademark had become distinctive as of the application’s filing date.
Registration also provides a defence against allegations of infringement. To overcome this defence, a plaintiff would typically need to expunge the registration in Federal Court, which can be difficult. The owner of a registered mark may sue to prevent use of the mark by others that would likely depreciate the value of the goodwill attaching to mark; this protection is not afforded to unregistered marks. Another advantage of registration is that during the application process the Canadian Intellectual Property Office (CIPO) will cite a registered mark against an applied-for mark that is confusingly similar. This has the potential to prevent the conflicting application from maturing to registration.
Who may register trademarks?
Trademark applications can be filed in the name of individuals, corporations, trade unions and lawful associations (eg, partnerships and joint ventures).
It is not possible for joint applicants to file an application. However, this will be permitted once the proposed changes to the Trademarks Act come into effect.
What marks are registrable (including any non-traditional marks)?
The following types of mark are registrable:
- word marks;
- design marks – including designs containing colour and designs applied to a three-dimensional (3D) shape (eg, a logo that wraps around the corner of a box);
- distinctive shaping of goods or their containers and modes of wrapping or packaging goods; and
- sound marks.
However, when the proposed changes to the Trademarks Act come into effect, a far wider range of marks will become registrable. They will include:
- a word;
- a personal name;
- a design;
- a letter;
- a numeral;
- a colour;
- a figurative element;
- a 3D shape;
- a hologram;
- a moving image;
- a mode of packaging goods;
- a sound;
- a scent;
- a taste;
- a texture and the positioning of such indicia; and
- combinations of such indicia.
Where the mark consists primarily of non-traditional indicia, the applicant will be required to file evidence that the mark was distinctive of the applicant in Canada as of the application filing date.
Can a mark acquire distinctiveness through use?
Yes, some marks are not inherently registrable because the mark is clearly descriptive of the goods or services or because the mark is primarily merely a name or surname. However, such marks can sometimes be registered with evidence. For applicants without a foreign registration, the evidence must show that the applied-for mark had become distinctive of the applicant as of the filing date in Canada. This is generally accomplished with evidence of use and advertising of the mark in Canada. In difficult cases, applicants may also file additional evidence such as consumer surveys. Only evidence that:
- pre-dates the filing of the application; and
- concerns the Canadian marketplace is considered relevant.
Applicants with a foreign registration can currently benefit from a lighter evidentiary threshold; they need only show that the applied-for mark is not without distinctive character. In such cases, foreign evidence is considered relevant. However, this preferential treatment shown to marks registered abroad is being removed in amendments to the Trademarks Act.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
A mark may be refused on absolute or relative grounds, either during examination by CIPO or at opposition.
Are collective and certification marks registrable? If so, under what conditions?
Yes, in Canada, certification marks must be registered to be protected; unregistered certification marks are not recognised at common law. There are currently three noteworthy requirements that set certification marks apart from other trademarks:
- the mark must have been used before filing (either in Canada or abroad, depending on the entitlement basis claimed) in association with the goods or services for which registration is sought;
- the applicant must provide the particulars of the defined standard that goods or services must meet in order to bear the certification mark (CIPO generally requires that sufficient detail be given to allow a member of the public to ascertain the precise nature of the defined standard that the use of the mark is intended to indicate); and
- the applicant must not be engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used.
However, once the amendments to the Trademarks Act come into effect, it will be possible to file applications for certification marks without first establishing use of the mark.
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