Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions.
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.
Click here to view the full article.