What is the primary legislation governing trademarks in your jurisdiction?
The primary legislation governing trademark law in Canada is the Trademarks Act, which has been largely unchanged since it came into force in 1954. Significant amendments to the Trademarks Act were enacted in 2014 and are anticipated to come into force in 2019. The amendments are intended to modernise the Canadian trademark system and bring it into alignment with international best practices.
Which international trademark agreements has your jurisdiction signed?
Canada is a member of the Paris Convention for the Protection of Industrial Property 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 will join the Madrid Protocol, the Nice Agreement and the Singapore Treaty on the Law of Trademarks.
Which government bodies regulate trademark law?
The Canadian Intellectual Property Office is responsible for the administration and processing of IP rights (eg, trademarks, patents, copyright, industrial designs and integrated circuit topographies). The registrar of trademarks is the person responsible for the administration of the Trademarks Act.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Canada is a first-to-use jurisdiction.
What legal protections are available to unregistered trademarks?
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.
How are rights in unregistered marks established?
Rights in unregistered marks are established through use and promotion of the marks in Canada in association with goods or services.
Are any special rights and protections afforded to owners of well-known and famous marks?
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.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Although foreign trademark registrations are accorded no rights in Canada, an applicant can rely on use and registration in a foreign jurisdiction to support its Canadian application.
What legal rights and protections are accorded to registered trademarks?
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.
Who may register trademarks?
Any person can 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.
What marks are registrable (including any non-traditional marks)?
The Trademarks Act defines ‘trademark’ to mean a mark that is used by a person to distinguish that person’s goods or services from those of others. This includes:
- colour as applied to a particular shape and size;
- certification marks; and
- distinguishing guises.
Under amendments to the Trademarks Act anticipated to come into force in 2019, the definition of ‘trademark’ will be expanded to include a sign or combination of signs used by a person to distinguish that person’s goods or services from those of others and will 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.
Can a mark acquire distinctiveness through use?
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
The registrar may refuse an application for registration at examination if:
- the application does not conform with the technical requirements of Section 30 of the Trademarks Act, which sets forth the contents required in an application;
- the trademark is not registrable (eg, 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); or
- the applicant is not the person entitled to registration because it 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 may also refuse an application at examination on the basis that the trademark is not distinctive.
Are collective and certification marks registrable? If so, under what conditions?
A certification mark is a mark used for the purposes of distinguishing goods or services of a defined standard from goods or services not of that defined standard. A certification mark may be adopted and used only by a person who is not engaged in the manufacture, sale or leasing of the goods or provision of the services covered by the certification mark. Any application for a certification mark must provide particulars of the defined standards.
The Trademarks Act does not provide for collective marks.
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 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?
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.
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.
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.
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).
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.
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).
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?
A registration can be expunged for non-use. The summary expungement procedure is an administrative procedure under Section 45 of the Trademarks Act. It is commenced on the request of a third party made after the third anniversary of the registration and the payment of an official fee of C$400. The registrar will then issue a notice requiring the registered owner of the mark to file evidence of use – or evidence of special circumstances justifying non-use – in the three-year period immediately preceding the issuance of the notice. The registrar may also request such evidence at its own discretion.
The owner of record must file evidence of use (or of circumstances excusing non-use). Such evidence is not subject to cross-examination. Both parties then have the opportunity to file written arguments and attend a hearing.
An appeal of the registrar’s decision can be filed with the Federal Court. An appeal is commenced by preparing and filing a notice of application with the Federal Court. The owner of the registration may file affidavit evidence in support of the appeal in addition to the evidence filed with the registrar. If there is additional evidence that would have had 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. A further appeal can be made to the Federal Court of Appeal (as of right) and the Supreme Court of Canada (only with leave).
The Canadian Intellectual Property Office has published a Practice Notice for Section 45 Proceedings.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
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; or
- the applicant was not entitled to registration.
Who may file a request for revocation and what is the statute of limitations for filing a request?
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. The request for invalidity may be based on registrability, distinctiveness or abandonment. However, entitlement grounds may be asserted only by the party claiming prior use or making known. Under Section 17(2) of the Trademarks Act, registrations are also incontestable based on prior use after five years from registration unless knowledge of this prior use can be established.
What are the evidentiary and procedural requirements for revocation proceedings?
A revocation proceeding may be commenced by way of application to the Federal Court. It may also be commenced 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.
What is the appeal procedure for cancellations or revocations?
An appeal can be filed with the Federal Court of Appeal. No new evidence can be filed. The appeal will be heard by a panel of three judges. A further appeal to the Supreme Court of Canada is permitted only with leave.
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.
Which courts are empowered to hear trademark disputes?
The Federal Court has both concurrent and exclusive jurisdiction to hear trademark disputes – the jurisdiction is exclusive where statutory registration, expungement or the grant of trademark rights is at issue. Jurisdiction is concurrent when the claim is one of infringement of those rights. A party can elect to bring these claims before the Federal Court or before the provincial superior courts.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
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 which 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 was recently broadened to include 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.
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.
In-transit shipments and personal-use goods are excluded.
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.
Who can file a trademark infringement action?
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.
What is the statute of limitations for filing infringement actions?
The statute of limitation 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.
What is the usual timeframe for infringement actions?
In the Federal Court a party can choose procedural tracks. The first – ‘by way of application’ – is relatively rapid, 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 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.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
A party seeking an interim or interlocutory injunction must move swiftly to seek relief and establish:
- a serious issue to be tried;
- irreparable harm; and
- that the balance of convenience favours the moving party.
The courts may be reluctant to grant interlocutory injunctions where the moving party can be compensated in damages.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
The owner of an infringed mark may seek:
- interim or interlocutory injunctions;
- permanent injunctions;
- an accounting of profits; or
- 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.
What customs enforcement measures are available to halt the import or export of infringing goods?
Canada has adopted a new request for assistance regime to halt the import or export of counterfeit goods, whereby the owner of 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.
What defences are available to infringers?
A defendant will typically argue that there is no confusing similarity between the marks at issue and attack the registered rights on which the plaintiff relies. 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).
What is the appeal procedure for infringement decisions?
An appeal can 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.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
There are no specific rules or procedures governing assignment of trademark rights. 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. There is no requirement that an assignment be recorded to have legal effect.
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.
Where the mark is associated with other marks on the register, the assignment will be recorded only if all of the associated marks are the subject of the assignment. Under the amendments to the Trademarks Act anticipated to come into force in 2019, the concept of associated marks will be eliminated.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
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, the Canadian Intellectual Property Office (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.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
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.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
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 which have been put up for security and a note to that effect will be entered on the register.
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 industrial design – 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 which 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.