Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions. ​

Rights and protection

Ownership

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.

Unregistered trademarks

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.

Registered trademarks

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:

  • words;
  • designs;
  • colour as applied to a particular shape and size;
  • sound;
  • motion;
  • 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?

Yes.

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.

Click here to view full article.