Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions. 

Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

No power of attorney is required in Canada.

What information and documentation must be submitted in a trademark registration application?

Pursuant to Section 30 of the Trademarks Act, the application must contain (among other things):

  • a statement in ordinary commercial terms of the specific goods or services of interest;
  • the basis for the application (eg, use in Canada, proposed use in Canada or use and registration in another jurisdiction);
  • a representation of the mark; and
  • a statement that the applicant is satisfied that it is entitled to use the trademark in Canada in association with the goods or services set forth in the application.

A key change under amendments anticipated to come into force in 2019 is that applicants will no longer be required to provide a basis for the application.

What rules govern the representation of the mark in the application?

No drawing is required for a mark that is a word or words not depicted in special form; otherwise, a drawing is required, which must:

  • be in black and white;
  • be no larger than 7cm by 7cm; and
  • not include any matter that is not part of the trademark.

Are multi-class applications allowed?

Yes, an application can cover multiple classes at no additional fee. Under the amendments to the Trademarks Act anticipated to come into force in 2019, Canada will require use of the Nice Class system. Multi-class applications will be allowed, but there will be a fee per class.

Is electronic filing available?

Yes.

What are the application fees?

The application fee is C$250. Once Canada adopts the Nice Class system, there will be a fee per class for multi-class applications – C$330 for the first class and C$100 for each additional class.

Priority

How are priority rights claimed?

An applicant can claim priority based on an application filed in a country that is a member of the Paris Convention or the World Trade Organisation (WTO). The application must cover the same kind of good or service and must be for the same or substantially the same mark. The priority claim is made by filing an application that contains a declaration setting out the particulars of the foreign application. The application must be filed within six months of the foreign filing date. Although a copy of the foreign application is not required, it can be requested by the registrar. The applicant (or the applicant’s predecessor in title) must have been, as of the date of the foreign application, a citizen or national of, domiciled in, or have had a real and effective industrial or commercial establishment in the country in which the foreign application was filed. The Canadian Intellectual Property Office (CIPO) has published a Practice Notice on Priority Claims.

Under the amendments to the Trademarks Act which will come into force in 2019, the requirement that the applicant be a citizen or national of or domiciled in, or have had a real and effective industrial or commercial establishment in, the country of the Union in which the application was filed will be modified. The applicant need only be a citizen or national of or domiciled in, or have had a real and effective industrial or commercial establishment in, a Paris Convention or WTO country regardless of the country in which the application was filed.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

CIPO does not require or provide trademark searches. However, it is always wise for an applicant to conduct its own full searches before entering the market to ascertain the risks of use and registration, particularly since Canada is a first-to-use jurisdiction.

Examination

What factors does the authority consider in its examination of the application?

During examination, CIPO will consider whether:

  • the application conforms with the technical requirements of Section 30 of the Trademarks Act, which sets out the contents required in an application;
  • the trademark is registrable (eg, whether it is primarily merely the name or surname of an individual who is living or has died within the preceding 30 years, is clearly descriptive of origin or is confusing with a registered trademark); and
  • the applicant is the person entitled to registration (eg, whether the mark is confusing with a mark which is the subject of a previous, pending application).

Under the amendments to the Trademarks Act anticipated to come into force in 2019, the registrar will also consider whether the trademark is distinctive.

Does the authority check for relative grounds for refusal (eg, through searches)?

The registrar will consider marks in its own records (ie, registered marks and marks that are the subject of previous pending applications) only in assessing confusion. Marketplace use is not considered.

Under the amendments to the Trademarks Act anticipated to come into force in 2019, the registrar will also consider whether the trademark is distinctive and will likely conduct searches to support such a ground of refusal.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Where the registrar has raised objections to an application, an office action will be issued and the applicant will have six months to respond.

Can rejected applications be appealed? If so, what procedures apply?

A rejected application can be appealed by the applicant to the Federal Court. An appeal is commenced by preparing and filing a notice of application with the Federal Court. The applicant can file affidavit evidence in support of the appeal. The appeal will be heard by a single judge of the Federal Court. A further appeal can be made to the Federal Court of Appeal (as of right) and the Supreme Court of Canada (only with leave).

Registration

When does a trademark registration formally come into effect?

A registration formally comes into effect on payment of the registration fee, filing of a declaration of use (where required) and issuance of the certificate of registration at the end of the examination and opposition process. 

Under the amendments to the Trademarks Act anticipated to come into force in 2019, the registration will be issued and will come into effect once the period for opposition closes (if there is no opposition) or once the opposition is complete (including any appeals). No registration fee will be payable and the requirement for a declaration of use will be discontinued.

What is the term of protection and how can a registration be renewed?

The term of protection is 15 years and registrations can be renewed for further 15-year periods on payment of the renewal fee. There are no formalities required for renewal.

Registrations issued after the amendments to the Trademarks Act come into force in 2019 will have a term of protection of 10 years. Registrations renewed after the amendments come into force will have a 10-year renewal term and will have to be classified in accordance with the Nice Agreement.

What registration fees apply?

The registration fee is C$200. 

There will be no registration fee with respect to applications filed after the amendments to the Trademark Act come into force.

What is the usual timeframe from filing to registration?

The usual timeframe from filing to registration – assuming no significant examination issues and no opposition – is 16 to 18 months.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Any interested person can oppose an application once it has been published. The grounds of opposition must be set forth in a statement of opposition. The official fee for filing a statement of opposition is C$750. Typically, the grounds of opposition are that:

  • the application does not comply with the technical requirements of Section 30 of the Trademarks Act;
  • the mark is not registrable under Section 12 of the Trademarks Act;
  • the applicant is not the person entitled to registration under Section 16 of the Trademarks Act; or
  • the mark is not distinctive.

Once the statement of opposition has been served, the applicant must file a counterstatement. Subsequent to the counterstatement, the opponent must file its evidence in support of the opposition and the applicant must file its evidence in support of the application. The evidence is by way of affidavit and is subject to cross-examination. Finally, both parties will have the opportunity to file written submissions and attend an oral hearing. 

CIPO has published a Practice Notice for Opposition Proceedings that governs the procedures before the Opposition Board.

What is the usual timeframe for opposition proceedings?

The timeframe for a typical opposition, from commencement to the decision of the Opposition Board, is between two and three years.

Are opposition decisions subject to appeal? If so, what procedures apply?

Opposition decisions can be appealed as of right to the Federal Court. An appeal is commenced by preparing and filing a notice of application with the Federal Court. The parties may file affidavit evidence in support of the appeal in addition to the evidence filed with the Opposition Board. If there is additional evidence that would have affected the registrar’s decision, the test on the appeal is whether the registrar’s decision was correct; if there is no such evidence, the test is whether the registrar’s decision was reasonable. The appeal will be heard by a single judge of the Federal Court. A further appeal can be made to the Federal Court of Appeal (as of right) and the Supreme Court of Canada (only with leave).

Click here to view full article.