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What is the primary legislation governing trademarks in your jurisdiction?
The Trademarks Act provides a regulatory framework for trademark application and registration, creates and codifies civil causes of action pertaining to infringement, passing off and other actionable activities related to intellectual property and also contains criminal offences pertaining to trademark infringement.
The Trademarks Act also provides for customs recordal, to help prevent the import of infringing goods. The Trademarks Regulations – subordinate legislation under the Trademarks Act – provide more detailed rules concerning the trademark application process and opposition proceedings.
However, other provincial and federal legislation may affect the use of trademarks in Canada – for example, the federal Precious Metals Marking Act and Quebec’s Charter of the French Language, which governs the use of French and other languages on product packaging and in advertising.
Which international trademark agreements has your jurisdiction signed?
Canada is currently party to:
- the Paris Convention;
- the Agreement of Trade-Related Aspects of Intellectual Property Rights; and
- other trade agreements with provisions pertaining to trademarks.
Canada is not yet party to the Madrid Protocol, the Nice Agreement or the Singapore Treaty. However, Canada is updating the Trademarks Act in anticipation of signing on to these three agreements. The necessary legislative changes are currently expected to come into effect in 2018 or 2019, with Canada becoming party to the aforementioned agreements in due course thereafter.
Which government bodies regulate trademark law?
In Canada, trademark registration is a matter of federal jurisdiction. National trademark law is made by the Parliament of Canada. The trademark application and registration process is administered by the Canadian Intellectual Property Office (CIPO), which is an agency within the federal ministry responsible for intellectual property – Innovation, Science and Economic Development Canada. CIPO also administers the Trademarks Opposition Board, which is an administrative tribunal that hears trademark oppositions as well as summary cancellation proceedings (the cancellation of registered marks for non-use).
Disputes – other than trademark oppositions and summary cancellation proceedings – are heard by the courts. The Federal Court has jurisdiction to hear civil lawsuits based on causes of action found within the Trademarks Act. Its orders are inherently enforceable nationwide. It is also possible to appeal a decision made by CIPO or the outcome of a trademark opposition to the Federal Court. Most IP litigation in Canada occurs before the Federal Court, which tends to concentrate IP expertise there.
Each province’s basic trial court – usually called the superior court or the court of queen’s bench, depending on the province – has jurisdiction to hear most trademark disputes, although only the Federal Court hears appeals from CIPO and Trademarks Opposition Board decisions and only the Federal Court can expunge registered marks. However, the superior courts have jurisdiction to interpret contracts, which may make them the better choice for IP disputes centred on the interpretation of agreements such as licences. Superior court orders (eg, injunctions) are not inherently enforceable nationwide; a successful plaintiff may need to take additional steps to have a decision of the superior court of one province enforced in other provinces.
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.
Filing and registration
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.
What information and documentation must be submitted in a trademark registration application?
The following information and documentation is required for a word mark or design mark application that is not based on an allegation of acquired distinctiveness in Canada:
- The applicant’s legal name and address;
- The trademark (if the mark is a design, an electronic copy is required);
- If the trademark includes wording in a language other than English or French, the Canadian Intellectual Property Office (CIPO) will ask for a translation. If the mark includes foreign characters, CIPO will also ask for a transliteration. These can be provided after filing;
- The goods or services of interest. At present, classification according to the Nice Agreement is optional. However, classification will eventually become mandatory – including for already registered marks – so some applicants may choose to classify now; and
- The filing basis or bases. If use of the mark in Canada is claimed, the applicant must provide the date of first use and name any predecessors in title. If use and registration abroad is claimed, a certified copy of the foreign registration needs to be filed with CIPO. This can happen after filing – any time before publication in the Canadian Trademarks Journal.
If priority is claimed, CIPO requires the particulars of the earliest application. This requirement is discussed in more detail below.
What rules govern the representation of the mark in the application?
Applications for word marks must contain only Latin characters, punctuation found on English or French keyboards, French accents and Arabic numerals. Colour cannot currently be claimed as a feature of a word mark. Word marks are generally applied for with all characters capitalised – if filed in this format, the applicant is free to change the capitalisation when using the mark.
For designs filed electronically, the design must be provided in TIFF format not exceeding 1 megabyte in size. If colour is claimed as a feature of the mark, the colour feature can be described specifically in the application (eg, "the paws of the cat are red"). Alternatively, the design can be lined for colour using the colour legend provided in the regulations (eg, horizontal lines represent the colour blue). The applicant may refer to a colour system (eg, "the paws of the cat are the colour turquoise (PANTONE 15-5519)"). In this case, the colour system must be identified in upper case characters and the statement “PANTONE is a registered trademark” is required.
Are multi-class applications allowed?
There is no restriction on the range of goods or services that can be claimed in an application. Canada is not currently party to the Nice Agreement. When Canada accedes to the agreement in the coming years, it will allow multi-class applications. At present, the range of goods or services claimed in an application does not affect filing and registration costs, but this may change after Canada becomes party to the Nice Agreement.
Is electronic filing available?
Electronic filing is available and encouraged via CIPO’s fee structure.
What are the application fees?
At present, the basic official fee for filing online is C$250 (C$300 for paper filing). If use and foreign registration is claimed as an entitlement basis, the applicant must file a certified copy of the foreign registration, for which there is an additional official fee of C$50.
How are priority rights claimed?
Priority can be asserted within the original application, an amended application, or a separate declaration. Priority rights must be asserted within the six-month priority window. Applicants generally indicate the office of the original filing and provide the original filing's application number. If the applicant does not provide the application number, CIPO will request a certified copy of the original application.
Errors in asserting priority can be corrected, but only within the six-month priority window. If the applicant would like to file more broadly in Canada than at home, the applicant can include the additional goods or services in the Canadian application and assert priority only for the goods or services covered by the home application. A single Canadian application can also claim priority based on multiple foreign applications (eg, one foreign application covering goods A, B and C; and one covering goods D, E and F).
Under the Trademarks Act as it currently stands, to claim priority the applicant must have been a citizen or national of the jurisdiction of filing of the original application, or have a real commercial or industrial establishment in that jurisdiction. For example, if a company located in the United Kingdom filed its original application in Switzerland it may not be able to claim priority in Canada, unless the company had a real commercial or industrial establishment in Switzerland. When claiming priority, applicants are also asked to state their connection to the jurisdiction of the original filing. This limitation on claiming priority will be removed when the changes to the Trademarks Act come into effect.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Canadian lawyers and trademark agents routinely conduct searches. Searching is not required, but it is recommended in most cases. In addition to considering the impact of potentially conflicting marks on the Trademarks Register, applicants should also generally conduct common law (marketplace) searches for unregistered marks and tradenames that may conflict with proposed marks in order to assess whether the owners of any such marks and names are likely to oppose the proposed application.
What factors does the authority consider in its examination of the application?
In addition to reviewing applications for formalities, CIPO also conducts a substantive examination of the application. There are various substantive grounds on which CIPO may object to an application, including the following:
- The mark is primarily merely the name or the surname of an individual who is living or has died within the preceding 30 years.
- The mark is clearly descriptive or deceptively mis-descriptive in the English or French language of:
- the character or quality of the applied-for goods or services; or
- the conditions of or the persons employed in their production; or
- their place of origin.
- The mark is the name in any language of any of the applied-for goods or services.
- The mark is confusing with a registered trademark.
- The adoption of the mark is prohibited. There are numerous prohibitions, including prohibitions against adopting:
- obscene marks;
- marks likely to be mistaken for official marks used by Canadian governments and other Canadian public authorities;
- marks that falsely suggest a connection with a living individual;
- marks that are the portrait or signature of any individual who is living or has died within the preceding 30 years; and
- marks that through ordinary and bona fide commercial usage have become recognised in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any goods or service.
There are additional grounds of refusal pertaining to protected geographical indications and protected Olympic and Paralympic marks.
Does the authority check for relative grounds for refusal (eg, through searches)?
Yes, CIPO conducts a search of the register and the examiner will object to the subject application if he or she identifies a confusingly similar registered mark or a pending application for a confusingly similar mark, provided that the pending application was filed before the subject application. The examiner will cite a previously filed pending application even if the owner of the subject application has superior entitlement. In such a case, the owner of the subject application would need to oppose the cited application to clear a path for the subject application.
CIPO does not currently raise objections pertaining to common law marks that have not been registered or applied for. However, when the changes to the Trademarks Act come into effect, CIPO will be empowered to object to an application if the examiner believes the mark is not distinctive of the applicant. Such an objection could potentially be based on third-party common law rights.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Only some issues can be addressed by making amendments to the application. Objections to the goods or services description are common in Canada as they are to be set out in specific and ordinary commercial terms. The goods or services description can be further specified and narrowed after filing; such changes are generally enough to overcome wording objections. As in most jurisdictions, the goods or services specification cannot be expanded after filing.
Confusion objections can sometimes be overcome by narrowing the goods or services specification to reduce the degree of overlap with the cited mark. The applicant may also try to restrict the relevant channels of trade by describing them in the goods or services specification (eg, “sports balls sold exclusively through an online store”).
Clear descriptiveness and surname objections can be overcome by amending the application to claim that the mark had acquired distinctiveness in Canada as of filing. However, this will succeed only if the applicant can then provide sufficient evidence to support that claim.
There is little flexibility to amend the mark itself after filing. In some cases, CIPO might – for example – permit a minor correction to the mark’s punctuation, provided that the change does not alter the mark’s distinctive character or affect its identity. Any such change must be made prior to publication in the Canadian Trademarks Journal.
Can rejected applications be appealed? If so, what procedures apply?
Any decision by CIPO with respect to an application – including a decision to refuse an application – may be appealed to the Federal Court. There is a basic two-month time limit in which to appeal a decision by CIPO. The court has the discretion to grant an extension of time. An appeal is commenced by filing a notice of appeal with the court and CIPO. If the decision under appeal referred to a third-party trademark, the registered owner of that mark must also be given notice of the appeal. New evidence may be filed on appeal.
When does a trademark registration formally come into effect?
Upon issuance of the registration certificate and entry of the trademark onto the register. This is the final step of the registration process, after examination by CIPO and after the opposition period.
What is the term of protection and how can a registration be renewed?
At present, the registration term is 15 years, which can be renewed repeatedly. However, when the amendments to the Trademarks Act come into effect, the registration term will be reduced to 10 years. A registration may be renewed by the payment of a fee. No evidence of use of the mark or similar formalities are required.
What registration fees apply?
A C$200 registration fee must be paid in order for an allowed application to mature to registration.
What is the usual timeframe from filing to registration?
One to two years, assuming no major issues arise, such as an opposition.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes, an application can be opposed on the following grounds:
- the applied-for mark is not registrable (the same substantive grounds on which CIPO may object to an application);
- the applicant is not entitled to registration;
- the applied-for mark is not distinctive of the applicant; and
- the application does not contain all the information required by the Trademarks Act or the requisite information is incorrect – for example, the goods and services are not described in ordinary commercial terms.
Under the existing rules and practice guidelines, the general procedure of an opposition is as follows:
- After the filing of the statement of opposition setting out the grounds on which the opponent wishes to oppose the application, the applicant has two months in which to file and serve a counterstatement – this typically includes a blanket denial of all of the opponent’s allegations.
- Once the counterstatement is filed and served, the opponent has four months in which to file and serve its evidence.
- Once the opponent’s evidence is filed and served, the applicant has four months in which to file and serve its evidence.
- Once the applicant’s evidence is filed and served, the opponent has one month in which to file and serve reply evidence, if appropriate.
- During the evidence phase, the parties may request cross examination of the other side’s affiants. If a party fails to submit its affiant to cross examination, the Trademarks Opposition Board will not accept that affiant’s evidence.
- After the evidence phase is complete, the Trademarks Opposition Board will invite the parties to submit written arguments, and by default sets a deadline of one month.
After the parties have submitted their written arguments, they may also request an oral hearing before the Trademarks Opposition Board. For cost reasons, many oppositions are resolved without an oral hearing.
What is the usual timeframe for opposition proceedings?
A simple opposition may take around two years if carried to its conclusion. However, various extensions of time are available – including lengthy nine-month cooling off extensions of time intended to help the parties reach settlement – therefore, it is possible for an opposition to take significantly longer than two years to reach its conclusion.
Are opposition decisions subject to appeal? If so, what procedures apply?
Opposition decisions are appealed to the Federal Court in the same way as any other decision by CIPO. Additional evidence can be filed on appeal. If the additional evidence would have materially affected the Trademarks Opposition Board’s decision, the Federal Court will perform its own assessment of the issues. If the additional evidence does not meet this threshold – or if no additional evidence is filed on appeal – the court will assess only whether the Trademark Opposition Board’s decision was reasonable.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Section 45 of the Trademarks Act provides a means whereby a registration for a trademark may be expunged. In particular, a registration may be expunged under Section 45 if the mark has not been in use in Canada during the past three years and there are no special circumstances justifying the lack of use.
The standard stages in a Section 45 proceeding are as follows:
- Issuance of Section 45 Notice:
- anyone (the requesting party) may ask the registrar of trademarks to issue a notice under Section 45 – a notice will generally be issued, provided the prescribed fee is paid and the registration has been on the register for more than three years and has not been the subject of a Section 45 decision during the preceding three years.
- Evidence stage:
- the owner of a trademark registration (the registrant) files evidence in the form of affidavits or statutory declarations.
- Argument stage:
- the requesting party is given an opportunity to file written representations concerning the adequacy of the registrant's evidence;
- the registrant is given an opportunity to file written representations concerning the adequacy of its evidence; and
- the registrant and the requesting party are each given an opportunity to make submissions at an oral hearing.
Once all of the stages are complete, the registrar issues a written decision. This decision is appealable to the Federal Court.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
Section 18 of the Trademarks Act sets out the usual grounds of invalidity:
Under Section 18(1) the registration of a trademark is invalid if:
- the trademark was not registrable at the date of registration;
- the trademark is not distinctive at the time when proceedings bringing the validity of the registration into question are commenced;
- the trademark has been abandoned; or
- subject to Section 17, the applicant for registration was not the person entitled to secure the registration.
Trademark registrations have also been invalidated on the basis of material misstatements or fraudulent misrepresentations made during the course of prosecution.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any person interested may challenge the validity of a registered trademark. A ‘person interested’ would be anyone that is affected by an entry on the register or anyone with a reasonable apprehension that they will be so affected. However, if the ground of invalidity is prior use, the action must be pursued by the prior user or their predecessor.
The statute of limitations is set out under the topic of infringement, but specific to trademark invalidity proceedings it should be noted that in proceedings commenced after the expiration of five years from the date of registration of a trademark no registration shall be held invalid on the ground of the previous use or making known, unless it is established that the person who adopted the registered trademark in Canada did so with knowledge of that previous use or making known.
What are the evidentiary and procedural requirements for revocation proceedings?
An invalidity proceeding can be commenced by way of application, which proceeds on the basis of a written record or an action with full discovery and other procedural differences.
If proceeding by way of application, the only pleading is the notice of application. The applicant serves its evidence, the respondent serves its evidence and cross-examinations can be conducted out of court. The evidence can consist of both factual affidavits and expert affidavits, if necessary. Following this, written submissions are filed by both sides. At the hearing, both sides make oral argument on the basis of the written record just described. There are no live witnesses and no discovery. The applicant bears the burden of establishing that the trademark is invalid. The application can be completed within one to two years.
If proceeding by way of action the burden is the same, however, the procedure is different. The parties plead the case fully, with a statement of claim, statement of defence, and reply. Counterclaims are also possible. Then, the parties engage in both documentary and oral discovery. Documentary discovery is limited – as compared with the United States – but is still more extensive than many other countries. All documents that are relevant (tend to prove or disprove any issue in the case) must be disclosed. Each party then produces a representative who may be discovered orally on any issues relevant to the case. Expert reports are served. Then, there is a trial where live witnesses are both examined and cross-examined in front of a judge. This process can take two to four years.
What is the appeal procedure for cancellations or revocations?
Decisions in summary cancellation proceedings (ie, under Section 45) may be appealed to the Federal Court. The Federal Court decision can be appealed as of right to the Federal Court of Appeal. A further appeal can be taken to the Supreme Court if leave to appeal is granted by that court.
Decisions by the Federal Court in invalidity proceedings may be appealed to the Federal Court of Appeal. A further appeal can be taken to the Supreme Court if leave to appeal is granted by that court.
What is the procedure for surrendering a trademark registration?
Canada does not have a procedure for the surrender of a trademark registration.
Which courts are empowered to hear trademark disputes?
The following courts are empowered to hear trademark disputes:
- The Federal Court of Canada and the Federal Court of Appeal; and
- Provincial or territorial courts of competent jurisdiction.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Proceedings for trademark infringement are within the concurrent jurisdiction of the Federal Court and the provincial superior courts. Proceedings are typically brought by way of an action, although it is also permissible to proceed by way of application. Proceedings before the Federal Court obtain a judgment that is enforceable across Canada. Judgments from superior courts will need to be enforced separately in each province and territory. However, it may be necessary to bring the proceeding in Superior Court if it also involves a claim that the Federal Court does not have jurisdiction to hear – such as tort or contract.
Although not technically infringement, a passing-off action is available to the owner of an unregistered trademark based on goodwill or reputation acquired through use. Similarly, there may be actions – albeit uncommon – that can be taken via the Criminal Code or the Competition Act.
Who can file a trademark infringement action?
The owner of a registered trademark.
With respect to the licensee of a registered trademark – subject to any terms in the licence agreement – a licensee may call on the trademark owner to take proceedings for infringement, and, if the owner refuses or neglects to do so within two months after being so called on, the licensee may institute proceedings for infringement in the licensee’s own name as if the licensee were the owner, making the owner a defendant.
What is the statute of limitations for filing infringement actions?
Limitation periods are not set out in the Trademarks Act. The applicable limitation period may depend on where the infringement took place and the court in which the action is initiated.
What is the usual timeframe for infringement actions?
Two to four years.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
Permanent injunctions and interlocutory injunctions are available.
Interlocutory injunctions are rarely granted in trademark cases. The well-established test requires that a plaintiff establish:
- a serious issue to be tried on the merits of the case;
- that the moving party will suffer irreparable harm if the motion is refused; and
- that the balance of convenience favours the granting of the injunction.
It has been difficult for plaintiffs to demonstrate that irreparable harm will result – rather than could result or may result.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
The following remedies are available to owners of infringed marks:
- damages or an accounting of profits;
- legal costs;
- punitive damages; and
- order for destruction or delivery of infringing materials.
What customs enforcement measures are available to halt the import or export of infringing goods?
The recently implemented Canada Border Services Agency (CBSA) Intellectual Property Rights Programme provides Canadian customs authorities with the ability to detain suspected counterfeit or pirated products and to exchange information with rights holders in order to confirm the counterfeit nature of the products.
A request for assistance must be filed with the CBSA. Trademarks must be registered before filing a request with the CBSA.
What defences are available to infringers?
Some of the most common defences to infringement include:
- burden of proof not met by plaintiff;
- no likelihood of confusion; and
- invalidity of plaintiff’s registered trademark.
What is the appeal procedure for infringement decisions?
An appeal of a decision by Federal Court is made to the Federal Court of Appeal; the notice of appeal is to be filed within 30 days of the date of the decision.
Provincial and territorial court matters are appealed to the court of appeal in that province or territory. Each province and territory has different procedural rules. Leave may be required in certain cases.
A further appeal can be taken from an appeal court to the Supreme Court, but one must first seek leave of that court for the appeal to proceed.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
Registered and unregistered trademarks are transferrable in respect of some or all of the goods or services associated with the mark. Registered trademarks may be transferred with or without their associated goodwill.
An assignment does not need to be recorded to have legal effect.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
A trademark licence need not be recorded in order to have legal effect. There is no requirement that a trademark licence be in writing.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
Under Section 50 of the Trademarks Act the trademark owner must have – under the licence – direct or indirect control over the character or quality of the licensed goods or services.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
The Canadian Intellectual Property Office will record a security interest in a trademark application or registration. Recordal gives notice of the existence of a security interest.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
There may be an overlap between trademark rights and copyright where the mark at issue is a design mark, as design marks may be considered to have artistic features that are protectable under copyright law.
There may also be protection for trademarks as industrial designs. The ornamental features of a product or its packaging may be protectable as a trademark or as an industrial design.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The responsibility for ‘.ca’ domain names is governed by the Canadian Internet Registration Authority.
The Trademarks Act applies to the use of trademarks in Canada, including online use.