At a glance: trademark registration and use in Canada

Registration and use

Who may apply for registration?

A trademark application may be applied for by, or on behalf of, a ‘person’. A ‘person’ includes an individual, partnership, trade union, association, joint venture or corporation, and two or more persons who, by agreement, do not have the right to use the trademark in Canada except on behalf of both or all of them.

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

A trademark is a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others. A trademark may incorporate words or designs, and also encompasses non-traditional trademarks such as sounds, holograms, moving images, scents, tastes, colours (ie, a single colour or combination of colours without delineated contours), three-dimensional shapes, a mode of packaging goods, textures, and the positioning of a sign on an object. A trademark may also be a certification mark.

Can trademark rights be established without registration?

Trademark rights can be established without registration. The rights associated with unregistered trademarks are geographically limited to the geographical area in which the mark is used or has a reputation.

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?

Trademarks that are not used domestically may be entitled to protection provided it can be proved that the trademarks enjoy a reputation in Canada in the geographical area in which protection is sought, and the conditions applicable to a passing off action apply.

What are the benefits of registration?

With some exceptions, a valid registration of a trademark in respect of any goods or services, gives the owner the exclusive right to use the trademark throughout Canada in respect of those goods or services. Such right can be exercised in the Federal Court as well as any provincial court of competent jurisdiction.  In contrast to an action for passing off (unfair competition in Québec), a trademark infringement action does not require proof of notoriety in the area where an accused trademark or trade name is being used.  In addition, an action my lie for depreciation of goodwill of a registered trademark that is well known in Canada irrespective of proof of likelihood of confusion.

The owner of a registered trademark that is infringed by the importation and sale of counterfeit goods may be entitled to assistance under the Combating Counterfeit Products Act, whereby goods may be detained by customs officials.

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?

Trademark applications may be filed in English or French. Applications may be filed electronically, but paper filing is also accepted. Trademarks searches are available, but not required, before filing.

Each application requires the following:

• the applicant’s name and postal address;
• a representation or description of the trademark;
• a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used, grouped according to the Nice Classification system; and
• in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant is not 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 or proposed to be used.

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 Canadian Intellectual Property Office (CIPO) is notoriously slow in examining trademark applications. For non-Madrid applicants, the delay between filing and first examination currently is about 40 months. The delay can be reduced if the goods/services comply with approved descriptions prior to filing, or if the application is pursuant to the Madrid Protocol.  Objections can be made on numerous grounds including non-distinctiveness, confusion with prior marks, descriptions of goods or services that are deemed to be unclear, etc. CIPO examines on relative grounds as well as absolute grounds. Registration comes into effect once the registration issues.

The government fee for filing a trademark application covering one class of goods or services is CA$335.93 if filed electronically. There is an additional government fee of CA$101.80 for each additional class of goods or services. The total cost varies widely, depending on the nature of the objections. At present, there is no additional fee for issuance of the registration.

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?

Canada follows the International Classification System. Multi-class applications are available, subject to payment of additional fees per class.

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?

CIPO examines trademark applications for completeness and compliance with registrability requirements, as well as for potential conflicts with other marks covered by registrations or pending applications, ie, relative grounds. If objections are raised, the Examiner may issue an office action with a six-month response deadline. Extensions of time are available where exceptional circumstances exist. If the objection is minor, the Examiner may contact the applicant by telephone. In limited circumstances, CIPO will consider a consent agreement between the parties, but the agreement must disclose surrounding circumstances in support of the argument there is no likelihood of confusion.

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?

Use of a trademark in Canada or elsewhere is not a precondition to registration. However, a trademark that is not in use is vulnerable to cancellation for non-use once it has been on the Register for three years.

Foreign applications are granted priority provided that the Canadian application is filed within six months of filing of the foreign application.

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?

Marking is not mandatory but is recommended to provide notice of rights. Unregistered or common law marks may use the ^TM or ^MC symbol. Once a mark is registered, the ® symbol may be used.

Is there an appeal process if the application is denied?

Decisions of the Registrar of Trademarks may be appealed to the Federal Court of Canada. The appeal must be made within two months of the date of the Registrar’s decision.

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?

Once an application is approved, it is published in the Trademarks Journal. A third-party may oppose, or request an extension of time to oppose, registration of the application during a two-month period following publication.

Grounds of opposition include:

• that the application does not conform to the content requirements as set out in the Trademarks Act;
• that the application was filed in bad faith;
• that the trademark is not registrable;
• that the applicant is not the person entitled to registration of the trademark;
• that the trademark is not distinctive;
• that, at the filing date of the application in Canada, determined without taking into account any claims for priority, the applicant was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application; or
• that, at the filing date of the application in Canada, determined without taking into account any claims for priority, the applicant was not entitled to use the trademark in Canada in association with those goods or services.

A trademark registration may be cancelled for non-use once it has been on the Register for 3 years. Any third party may request the expungement of a trademark registration based on non-use. A registrant has three months from the date of issuance of the Section 45 Notice to furnish the Registrar with an affidavit or a statutory declaration showing that the trademark has been used in Canada in association with all the goods and services covered by the trademark at any time during the three-year period immediately preceding the date of the notice. If sufficient evidence cannot be provided, the registration is cancelled.

Opposition and cancellation proceedings are handled by the Trademarks Opposition Board (TMOB), which is a part of CIPO. Decisions of the TMOB may be appealed to the Federal Court of Canada.

A trademark registration may also be expunged for invalidity, under the following circumstances. A registration may be expunged by the Federal Court on the application of any interested party.

• the trademark was not registrable at the date of registration;
• the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;
• the trademark has been abandoned;
• the applicant for registration was not the person entitled to secure the registration; or
• the application for registration was filed in bad faith.

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?

Registrations that issue after 17 June 2019 are valid for a period of 10 years; registrations which issued prior to 17 June 2019 are valid for 15 years. Registrations may be renewed at 10-year intervals thereafter. There are no use requirements per se; however, a trademark may be vulnerable to cancellation for non-use once it has been on the Register for three years.

What is the procedure for surrendering a trademark registration?

An application may be withdrawn, or a registration may be abandoned upon written request by the applicant or registrant.

Can trademarks be protected under other IP rights?

Yes, under certain circumstances, the Copyright Act may protect original artistic works used as trademarks.

A trademark can also be protected under the Industrial Design Act, where the mark consists of aesthetic features of the product design.

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

Canada does not have a separate regime governing the protection of trademarks online and domain names. Online trademark use is governed by the Trademarks Act. Domain names can also be protected as trademarks under the Act.