Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademark law in Canada is the Trademarks Act. The most significant amendments to the Trademarks Act in several decades came into force in June 2019. The amendments modernise the Canadian trademark system and bring it into alignment with international best practices.

International law

Which international trademark agreements has your jurisdiction signed?

Canada is a member of the Paris Convention for the Protection of Industrial Property (Paris Convention) and has implemented the Agreement on Trade-Related Aspects of Intellectual Property Rights and the North American Free Trade Agreement, which contains provisions relating to trademarks.

In 2019, Canada joined the Madrid Protocol, Nice Agreement and Singapore Treaty on the Law of Trademarks, implementing significant changes to Canada’s domestic legislation.

Regulators

Which government bodies regulate trademark law?

The Canadian Intellectual Property Office (CIPO) is responsible for the administration and processing of intellectual property (IP) rights (trademarks, patents, copyright, industrial designs, plant breeders’ rights, and integrated circuit topographies). The registrar of trademarks is the person responsible for the administration of the Trademarks Act.

Registration and use

Ownership of marks

Who may apply for registration?

Any person may file an application to register a trademark. ‘Person’ is defined to include any lawful trade union and any lawful association engaged in trade or business or the promotion thereof. Following recent changes to the Trademarks Act, the Trademarks Office will no longer object to applications naming co-owners of a trademark.

Scope of trademark

What may and may not be protected and registered as a trademark?

The Trademarks Act defines ‘trademark’ to mean a sign or combination of signs that is used or proposed to be used by a person to distinguish that person’s goods or services from those of others, or a certification mark. The Trademarks Act defines ‘sign’ to include:

  • a word;
  • a personal name;
  • a design;
  • a letter;
  • a numeral;
  • a colour;
  • a figurative element;
  • a three-dimensional shape;
  • a hologram;
  • a moving image;
  • a mode of packaging goods;
  • a sound;
  • a scent;
  • a taste;
  • a texture; and
  • the positioning of a sign.
Unregistered trademarks

Can trademark rights be established without registration?

Unregistered trademarks are protected by common law. They can be enforced in the Canadian courts and may also be used as a basis to oppose applications for registration or expunge registrations.

Rights in unregistered marks are established through use and promotion of the marks in Canada in association with goods or services.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

There are no special rights or protections afforded to owners of well-known and famous marks. However, the reputation of a mark is a relevant factor in assessing confusion with other marks. The Supreme Court of Canada has noted that while fame is capable of carrying a mark across product lines, it is the totality of circumstances that must be considered in assessing confusion.

If not used domestically, the owner of the foreign trademark may apply for trademark protection and obtain an enforceable trademark registration in Canada; however, there are restrictions on enforcing registrations for trademarks that have not been used in Canada.

The benefits of registration

What are the benefits of registration?

A trademark registration is a valuable business asset. Unless shown to be invalid, a registration gives to the owner of the trademark the exclusive right to use the trademark throughout Canada in association with the goods or services listed in the registration.

A trademark registration confers an enhanced ability to enforce and licence rights in Canada. A registration satisfies the requirements for a .ca domain name, and assists brands in policing their marks since registered marks will block confusingly similar marks during examination, and can be relied upon during opposition proceedings.

Additionally, a registration allows its owner to participate in Canada’s anti-counterfeiting border mechanism.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

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; and
  • a representation or description of the mark, or both a representation and description of the mark, that permits the mark to be clearly defined.

A key change under recent amendments to the Trademarks Act, which came into force in June 2019, is that applicants are no longer be required to provide a basis for the application.

Following the changes to the Trademarks Act, the requirement to provide a ‘drawing’ was replaced with the broader concept of a ‘representation’ or ‘description’ that clearly defines the trademark. No representation is required for a mark that is a word or words not depicted in special form. Any mark where colour is not claimed as a feature of the mark should not be filed with a representation of the mark in colour, and any mark where colour is claimed as a feature of the mark must be filed with a representation of the mark in colour. Electronic filing is available.

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. No procedures or fees apply.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The usual time frame from filing to registration - assuming no significant examination issues and no opposition - is 16 to 18 months. There are government filing fees of C$330 for the first class of goods or services and C$100 for each additional class of goods or services. Applicants should retain the services of a trademark agent to assist with the process of filing and registering a mark to avoid common pitfalls and expensive errors.

Registration comes into effect upon issuance of the registration certificate. Under the amendments to the Trademarks Act, the registration is 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 is payable for marks filed after 17 June 2019.

Filing in a large number of classes or filing for marks that are objected to on substantive grounds (eg, confusion, descriptiveness and lack of inherent distinctiveness) will generally increase the estimated time and cost of filing a trademark application and receiving a registration.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Trademarks must be classified according to the International Classification of Goods and Services (Nice Classification) system and under the auspices of the Nice Agreement, or they will not be approved for advertisement. There is an exception for trademarks advertised prior to the coming into force of the new law in June 2019, which do not necessarily need to be classified in order to be registered.

An application can cover multiple classes; however, there is an additional filing fee of C$100 per class after the first class of goods or services.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

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);
  • the applicant is the person entitled to registration (eg, whether the mark is confusing with a mark that is the subject of a previous, pending application); and
  • the trademark lacks distinctiveness.

Where the registrar has raised objections to an application, an office action will be issued.

Applications are examined to determine if they are confusingly similar to registered or earlier-filed pending trademarks, and whether they are likely to be mistaken for an official mark.

Letters of consent are generally afforded little weight by the Trademarks Office to overcome objections based on third-party registered or earlier-filed pending trademarks.

Letters of consent are accepted to overcome an objection on the basis that the mark is likely to be mistaken for an official mark.

Where an office action issues containing objections to an application, the applicant will have six months to respond to the objections raised in the office action, which can be extended a further six months.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Following recent changes to Canada’s Trademarks Act in June 2019, use need not be claimed before a registration is granted or issued. It is enough that the mark has been used or is proposed to be used in Canada, in order to receive a registration. Applicants with proposed use applications pending as of the changes to the Trademarks Act in June 2019 may have a registration issued by paying a registration fee, and need not file a declaration of use. No proof of used needs to be submitted.

Foreign registrations are not granted any rights of priority as compared to applicants without foreign registrations; however, the owner of a foreign application may claim priority in its Canadian application to an earlier-filed foreign application.

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 must 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.

A registration can be expunged for non-use through summary expungement proceedings commenced through the Trademarks Office, at any time following three years after registration of the mark.

CIPO has published the Practice Notice in section 45 Proceedings that governs summary expungement procedures before the Opposition Board.

Within three years of the registration of the mark, a trademark owner will not be entitled to relief against infringement or depreciation of goodwill of its mark unless the owner can show that the trademark was in use in Canada during that period or that special circumstances exist that excuse the absence of use in Canada during that period.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The symbol ® or MD (marque déposée) may be used to indicate a registered trademark. The symbol ™ or MC (marque de commerce) may be used to indicate a registered or unregistered trademark. Marking is not mandatory.

While there are no prescribed benefits to marking registered or unregistered trademarks, marking may promote public recognition of a trademark. Such recognition may be important to obtaining and enforcing unregistered common law trademark rights and may deter competitors from using the same or similar trademarks.

Appealing a denied application

Is there an appeal process if the application is denied?

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).

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Applications are published for a two-month opposition period.

Any interested person can oppose an application during the two-month publication period. The grounds of opposition must be set forth in a statement of opposition. 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;
  • the mark is not distinctive; or
  • the application was filed in bad faith.

In opposition, 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 the Practice Notice for Opposition Proceedings that governs the procedures before the Opposition Board.

A party may also seek cancellation of a trademark or service mark after registration (also called ‘expungement’ or ‘revocation’) in proceedings through the Federal Court of Canada. A registration can be declared invalid by the Federal Court if:

  • it was not registrable at the date of registration;
  • it is not distinctive when the validity proceedings are commenced;
  • it has been abandoned;
  • the applicant was not entitled to registration; or
  • the application was filed in bad faith.

Any interested person may file a request for invalidity under section 18 of the Trademarks Act. An interested person includes any person who is affected or reasonably apprehends that they may be affected by any entry on the register. A revocation proceeding may be commenced by way of application to the Federal Court, or within the context of an infringement proceeding in the Federal Court. Where the revocation is commenced by way of application, a notice of application setting out the grounds of revocation is filed with the Federal Court and served on the registrant. Both parties have the opportunity to submit evidence in the form of sworn affidavits, which are subject to cross-examination, and written submissions setting out the merits of their case. Ultimately, the matter will be heard and decided by a single judge of the Federal Court.

There is a ground of opposition available on the basis that the application was filed in bad faith, which does not necessarily depend on the brand owner showing that it had prior use or registration of its mark in Canada.

The typical costs associated with a third-party opposition or cancellation proceeding depend on:

  • the process chosen to challenge an application or registration;
  • the grounds and bases of the opposition or cancellation proceeding; and
  • the progress of the proceeding and steps taken by the parties.

Typical costs of an opposition proceeding through the Trademarks Office are in the range of C$10,000 to C$60,000. Typical costs of a cancellation proceeding through the Federal Court depend on whether the proceeding is taken by way of application or by way of action, and can be in the range of C$25,000 to C$200,000.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

For registrations issued prior to 17 June 2019, the initial term of protection is 15 years. For registrations issued after 17 June 2019, the initial term of protection is 10 years. Registrations renewed after 17 June 2019 will have a 10-year renewal term and will have to be classified in accordance with the Nice Agreement.

There is no requirement to declare or prove use to maintain a registration.

Surrender

What is the procedure for surrendering a trademark registration?

The owner of record must write to the registrar to request the cancellation of the registration.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

It is possible to protect a design mark via copyright where the conditions set out in the Copyright Act have been met (generally an original artistic work authored by a citizen, subject or resident of a Berne Convention country).

It is also possible to protect a trademark via an industrial design under the auspices of the Industrial Design Act - to protect the visual features of shape, configuration, pattern or ornament or any combination of these features applied to a finished article. An application to register an industrial design must be filed within one year of the design’s publication in Canada or elsewhere.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The Canadian Internet Registration Authority (CIRA) manages the .ca internet domain on behalf of all Canadians. CIRA’s Dispute Resolution Policy provides a mechanism for arbitration for individuals and businesses that meet CIRA’s Canadian presence requirements.

It is also possible to seek relief from Federal Court or the provincial superior courts based on passing off, infringement and depreciation of goodwill of existing trademark rights.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

Section 50 of the Trademarks Act governs the licensing of trademarks. A licence may be written or unwritten and may relate to both registered and unregistered marks. There is no provision to record a licence against registered marks. However, CIPO will permit the placement of licensing agreements on the files of trademarks that have been licensed and a note to that effect will be entered on the register.

The benefits of having a note to the effect that there is a licence agreement on file are nominal, however, it may provide some notice that there is a licence in place for the trademark.

The licensing agreement must give the trademark owner direct or indirect control over the character of quality of the goods or services offered by the licensee. To the extent that public notice is given that a mark is used under licence together with identification of the owner, it will be presumed - unless the contrary is proven - that the use is licensed by the owner and that the owner has control over the character and quality of the goods or services. For this reason, a licensing agreement should require the use of proper trademark notices.

Assignment

What can be assigned?

A trademark, whether registered or unregistered, is transferable either in connection with or separately from the goodwill of the business and in respect of either all or some of the goods or services in association with which it has been used.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

There are no specific rules or procedures governing assignment of trademark rights. An assignment may be recorded against a registration. The assignment need only be signed by the assignor. There is no requirement for notarisation. There is an official recordal fee of C$100 per mark.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

There is no requirement that an assignment be recorded to have legal effect.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

While a trademark can be the subject of a security interest, there is no provision in the Trademarks Act to register a security interest over a trademark. However, CIPO will permit the placement of security agreements on the files of trademarks that have been put up for security and a note to that effect will be entered on the register. There is no provision in the Trademarks Act that a security interest be recorded for the purposes of its validity or enforceability.

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Civil action

A party can sue for trademark infringement based on sections 19 and 20 of the Trademarks Act before the Federal Court or the relevant provincial superior court. Only a registered trademark can be infringed. Infringement is a defined legal term that typically includes the sale, distribution or advertisement of any goods or services in association with a confusing trademark or trade name.

The definition of infringement includes the manufacture, cause to be manufactured, possession, import, export or attempt to export any goods in association with a confusing trademark or trade name for the purpose of their sale or distribution. These same actions are not permitted where applied to labels or packaging intended to be associated with the goods or services of the owner of the registered mark.

The owner of a registered trademark may also bring an action for depreciation of goodwill of its trademark, under section 22 of the Trademarks Act.

An action for passing off under section 7 of the Trademarks Act can be brought before the Federal Court. An action for passing off at common law may also be brought before the relevant provincial Superior Court.

Criminal action

The Criminal Code targets the sale, offer for sale or distribution of counterfeit products on a commercial scale, as well as the manufacture, cause to be manufactured, possession, import, export or attempt to export any counterfeit goods and any label or packaging for the purpose of sale or distribution on a commercial scale.

Among other exceptions, in-transit shipments and personal-use goods are excluded.

Procedural format and timing

What is the format of the infringement proceeding?

In the Federal Court, a party can choose two different procedural tracks. The first, ‘by way of application’, is relatively quick, based on sworn affidavits with no examination for discovery. A party can expect to request a hearing within six months of launching proceedings, although court backlogs might delay the scheduling of the hearing. The application is heard by a single judge of the court where the proceeding is brought - typically the Federal Court of Canada.

The second, ‘by way of action’, is a more traditional litigation route with full discovery and live testimony. This procedural track is typically lengthier, with various motions along the way. A case can easily take several years to reach hearing and decision. The action is heard by a single judge of the court where the proceeding is brought, typically the Federal Court of Canada.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The burden of proof in an action for infringement or depreciation of goodwill is the balance of probabilities.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Any interested person may file a trademark infringement action. This includes any physical or legal person, lawful trade union, lawful association engaged in trade or business or administrative authority that is affected or reasonably apprehends that it may be affected by any act, omission or contemplated act or omission contrary to the Trademarks Act.

Only the Crown through its designated officials may initiate a criminal complaint.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Canada has adopted a request for assistance regime to halt the import or export of counterfeit goods, whereby the owner of one or more registered marks may register these rights with the Canada Border Services Agency (CBSA). The CBSA may then detain goods for five to 10 days and exchange information with trademark owners, allowing them to take civil action to extend the detention period. Brand owners will bear the costs of detention. There is no summary procedure allowing for the destruction of counterfeit goods.

In civil proceedings before a court, activities that take place outside the country of registration may support a claim of infringement or depreciation of goodwill (eg, infringement by export of goods to another jurisdiction).

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

In infringement proceedings where the trademark owner proceeds by way of action in the Federal Court, the Federal Courts Rules provide that the adverse party is required to provide copies of all relevant documents in its possession, power or control, and is required to submit to examination for discovery. Examination for discovery and production of documents from third parties may be ordered with leave of the Court, and third parties may be subpoenaed to attend at trial. Adverse parties outside of Canada are required to provide copies of all relevant documents and submit to examination for discovery in the same manner as Canadian parties.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

A motion or application for a preliminary injunction (in the context of an action for infringement or depreciation of goodwill) may be brought at the outset of proceedings, or after the close of pleadings.

In a proceeding brought by way of application, a decision may be obtained in a few months. In a proceeding brought by way of action, a case can take several years to reach hearing and decision.

An appeal of a trial decision will generally be heard and decided within one year of filing of the appeal.

Limitation period

What is the limitation period for filing an infringement action?

The limitation period for trademark infringement is generally six years after the cause of action arose if the cause of action - including damages - arises otherwise than in a single province of Canada.

In some Canadian provinces, the limitation period has been reduced to two years.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs of an action for infringement or depreciation of goodwill are difficult to predict in the abstract, and depend upon the pleaded issues, the manner in which the proceeding progresses, and the conduct of the parties in the litigation. Costs can range from less than $100,000 for a straightforward proceeding that is resolved in a summary manner, to more than C$1 million for complex actions that are hotly contested between the parties and the ultimate decision is appealed.

The successful party in an action for infringement or depreciation of goodwill is typically entitled to an award of costs.

Appeals

What avenues of appeal are available?

An appeal may be filed with the Federal Court of Appeal for Federal Court decisions and to the relevant provincial court of appeal where an action was brought before a provincial superior court. An appeal to the Supreme Court of Canada is permitted only with leave.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

A defendant in an infringement case will typically argue that there is no confusing similarity between the marks at issue and attack the registered rights on which the plaintiff relies. A defendant in an action for depreciation of goodwill will typically argue that it had not used the plaintiff’s registered trademark, that the plaintiff’s registered trademark is not sufficiently well known to have significant goodwill attached to it, and that the plaintiff’s mark was not used in a manner likely to have an effect on and to depreciate the value of that goodwill.

There are also many ways in which a defendant with significant financial means can seek to delay the progress of proceedings (eg, seeking to strike portions of a pleading, seeking particulars or motions to compel disclosure).

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The successful plaintiff in an action for infringement or depreciation of goodwill may seek:

  • interim or interlocutory injunctions;
  • permanent injunctions;
  • damages;
  • an accounting of profits; and
  • the destruction or other disposition of any offending goods, packaging, labels and advertising material and any equipment used to produce the goods, packaging labels or advertising material.

Punitive damages and exemplary damages may be awarded in exceptional circumstances. The successful party is typically entitled to an award of costs.

Penalties for criminal offences include a fine of up to C$1 million and up to five years in prison for an indictment, and a C$25,000 fine and up to six months in prison for a summary conviction offence.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Parties to a dispute may voluntarily participate in mediation. The Federal Court of Canada makes available judges and case management officers to conduct mediations of disputes before the Federal Court, and such mediations often result in successful outcomes.

In some provincial jurisdictions, a party may serve an adverse party with a notice to mediate, which requires the other party to participate in mediation, failing that, their claim or defence may be dismissed.

A mediated settlement agreement is enforceable under provincial law as any other agreement.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

The most significant amendments to the Trademarks Act in several decades came into force on 17 June 2019. Among other things, the requirements to declare a filing basis were removed, and declarations of use are no longer required to secure registration of proposed use marks. Canada joined the Madrid Protocol; the Nice Classification became mandatory, and grounds of opposition and expungement were changed. It is also now possible to file divisional applications.

In terms of enforcement, it is now possible to seek the expungement of registrations on the basis of bad faith. Further, an owner seeking to enforce a registration within three years of its issuance will not be entitled to relief unless the owner can show that the trademark was in use in Canada during that period or that special circumstances exist that excuse the absence of use in Canada during that period.