Canada and the United States have similar systems for registering and protecting trade-marks, and franchisors need to be aware of the procedures used in both countries when establishing businesses on both sides of the border. This bulletin highlights some important differences that can trip up the unwary.
What’s the Same?
As mentioned, there are many high-level similarities. Applications must describe the relevant products or services and set out the basis of the application. An application with an earlier filing date has priority over later applications, although prior use rights are relevant in opposition proceedings and litigation. And both countries are members of the Paris Convention, so an applicant who files a Canadian application can file in the US within 6 months and claim priority back to the earlier Canadian filing date (and vice versa).
The important differences between the US and Canadian trade-mark procedures include the following:
- Federal Registrations. In the US, trademarks can be registered in each state and a federal registration is only available if a mark is (or will be) used in interstate or international commerce. In Canada, marks can only be registered federally, and federal registration is permitted even if the mark is only (to be) used in one province.
- Classes. In the US, goods and services fall into different classes, and applicants must pay a filing fee for each class in an application ($375 per class; less for online applications). Canada does not use a classification system, and applicants pay one filing fee ($300 Cdn; less for online filings) regardless of how many goods or services are claimed.
- Basis of Application. US applications can be based on (i) prior use of the mark in commerce, (ii) intention to use the mark in commerce, or (iii) an existing foreign trademark registration. Canadian applications can also be based on “making the mark known” in Canada, and the Canadian “foreign registration” basis also requires that the mark have been used somewhere in the world.
- Supplemental Register. In the US, surnames or descriptive marks can be registered on the supplemental register. Canada does not have a supplemental register, and such marks must be distinctive to be registrable (which can be difficult to demonstrate).
- Opposition Period. In the US, applications can be opposed up to 30 days after being published. The Canadian opposition period is 2 months after publication.
- Term and Renewal. US registrations last for 10 years and can be renewed for 10-year terms. The Canadian initial registration and renewal terms are 15 years each.
- Evidence of Use. In the US, a trade-mark owner must file an affidavit of use between 5 and 6 years after registration and at 10- year anniversaries of registration. In Canada such regular affidavits are not required; however, a mark can be expunged after 3 years of registration if it has not been used.
- Licensing. In the US, use of a trade-mark by a corporate parent or subsidiary does not need a formal licence. In Canada, any use of a mark by a third-party, including a parent or subsidiary, must be licensed or the trademark will be jeopardized.
- Divided Applications. In the US, applicants whose applications include both “prior use” and “intended use” products or services can “split off” and register a separate application covering the “prior use” elements, while the original application with the remaining “intended use” elements continues. In Canada, an applicant can only register the “prior use” elements and abandon the “intended use” elements from that application, and file a new application to cover the “intended use” elements.