Canada: Trademarks

Last Updated: February 27 2015
Practice Guide by Bereskin & Parr LLP

What is a Trademark?

A trademark indicates to the public that the goods or services associated with it originate with a particular trader, and serves to distinguish such goods or services from those of other traders. A trademark's ability to distinguish a particular trader is referred to as the mark's "distinctiveness."

A trademark may generally consist of a word (such as PEPSI®) or words (such as KENTUCKY FRIED CHICKEN®), or a design (such as the GOLDEN ARCHES®), or a combination of such elements. A trademark may also consist of the shape of a product or its container (known as a "distinguishing guise") if that shape is distinctive of the goods of a particular trader. An example of a distinguishing guise is the well-known ROLLS ROYCE car grill. Certification marks, such as the wool symbol, are used to distinguish goods or services which are of a defined standard.

Why Register a Trademark?

The Trademarks Act is federal legislation which establishes a registration system, administered by the Canadian Intellectual Property Office (CIPO).

Trademark rights can exist in a mark irrespective of whether the mark is registered under the Trademarks Act. However, registered trademarks are easier to enforce and have a number of important advantages. First, since there is a Register maintained by CIPO, competitors can get notice of prior rights. Second, protection for the registered mark is given throughout Canada, regardless of whether the trademark is known in the area where the defendant is located. In contrast, the owner of an unregistered trademark must also establish the distinctiveness of the trademark, that is, that the public exclusively associates the trademark with the goods or services of the owner, and even if the requisite degree of distinctiveness can be shown (and this is sometimes expensive and difficult to prove), the scope of protection is limited to the geographical area in which distinctiveness is proven. Third, a registration provides prima facie evidence of the ownership of a work, and the dates of first use shown on the registration page.

Lastly, a registration may have a greater persuasive impact on a potential infringer than an allegation of rights arising through use.

How is a Trademark Different from a Trade Name?

A trade name or business name, although registered with provincial authorities, does not of itself confer any right to the name that is enforceable against third parties. Rather, registration simply enables the public to ascertain who is using a particular trade name.

A trade name may incorporate a trademark, or itself be used as a trademark (to denote the origin of goods or services, as opposed to being the name of a business) and thus be registrable and enforceable as a trademark (e.g., McDonald's is both a trade name or trade style, and a trademark for restaurant services).

Choosing a Trademark

The choice of a trademark may have a significant impact on its enforceability. Trademarks which are coined, or otherwise have no dictionary meaning in relation to the goods or services for which they are used, have strong or "inherent" distinctiveness. These marks are most easily enforced and are entitled to the widest scope of protection.

Trademarks which describe a quality or characteristic of the relevant goods or services receive a narrower scope of protection. However, marks which are clearly descriptive of the goods or services receive no protection under the Trademarks Act, because they cannot technically function as a trademark to distinguish the goods or services from those of another particular trader.

In between these two extremes are marks that are suggestive, but not clearly descriptive, of the wares or services. Some marks may be a composite of elements with some of each of these features.

Clearing a Trademark

Once a potential trademark has been selected, the next step is to determine if it is available for use and/or registration, free from any possible adverse claims. This is done by conducting a search of the trademarks Register and, to better assess availability, investigating use of trademarks by parties who may not have registered their rights, and searching corporate and business names.

The purpose of conducting a search of the Register is not just to locate trademarks which are the same as the selected mark, but also to identify potentially confusing trademarks which could pose obstacles to the use and registration of the selected mark. Given the importance of such a search, it is essential that the search be conducted under the supervision of, and the results interpreted by, an experienced trademark lawyer or agent.

Not all proprietors seek to register their trademarks, and the risk of an objection by a prior user of a trade name or of an unregistered trademark is an important consideration to bear in mind when selecting a mark. Therefore, a review of available trade directories in the relevant industry, telephone directories, and other sources of business information (known collectively as a "common law search") is often also done. Common law searching can be somewhat difficult and time-consuming because there is no comprehensive database available which may be searched.

The level of clearance searching required will depend on the situation. In some cases, a potential registrant will be content with a simple search of the records of the CIPO.

In other situations, especially where there will be a large investment in the launching of the new trademark, greater certainty is desired and so a full and thorough common law search will also be conducted. However, since comprehensive common law searching is difficult, there can be no guarantee that a trademark can be used without some risk of an adverse claim. The magnitude of such risk is a function of the scope and complexity of the search.

A trade name (including a corporate name) should also undergo a clearance procedure, similar to that for a trademark, prior to its use, especially if it is to be used to any significant extent in public.

Registering a Trademark

A trademark may be registered in Canada based on any one or more of the following grounds:

(1) actual use or proposed use in Canada by the applicant, (2) making known in Canada by the applicant, or (3) registration and use of the trademark abroad by the applicant. Use by a licensee instead of the applicant itself may also qualify. The last two grounds enable foreign applicants to obtain rights before there has been actual use in Canada. Again, an experienced trademark lawyer or agent should be consulted to determine how best to proceed.

A trademark application is subject to review by an examiner at CIPO. The examiner may approve the application for advertisement as filed, or may raise various requirements or objections. For example, there may be an objection that the mark is clearly descriptive of the relevant wares or services, that the wares or services should be defined in greater detail or that the mark is confusing with a prior application or existing registration. Applicants are given an opportunity to respond to such objections and, if appropriate, to amend the application.

Once an application is approved, a formal notice of approval is issued, and thereafter the application is advertised in the Canadian Trademarks Journal. Once advertised, the application may be opposed by one or more parties on a variety of grounds, including prior use of a confusingly similar trademark or trade name. Trademark oppositions, which are often lengthy and complex in nature, are decided by the Opposition Board, usually on the basis of evidence filed in the form of affidavits or declarations, and in some cases cross-examinations thereon, as well as written and/or oral arguments by the parties.

If no opposition is filed, or an opposition is unsuccessful or withdrawn, the application proceeds to allowance. Once allowed, in order to obtain a certificate of registration it is necessary to pay the registration fee and, if the application was filed based on proposed use, file a document entitled a Declaration of Use, stating that the mark applied for is now in use in Canada. A decision of an examiner or the Opposition Board regarding any of the above matters may be appealed to the Federal Court.

Generally, the minimum period required to obtain a trademark registration is 10 to 12 months, however this period can be substantially longer, especially where an opposition is filed. Once registered, the term of registration is 15 years from the date of issuance and is renewable for successive terms of 15 years each.

After the third anniversary of registration, failure to use a registered mark in Canada may result in the registration being vulnerable to summary expungement or amendment.

Using a Trademark Properly

Care should be taken to ensure that generic use of a trademark is strictly avoided. If a trademark becomes generic, it loses its ability to distinguish a particular trader as the source of the goods or services associated with the trademark. Such loss of distinctiveness may make a registered mark vulnerable to expungement. Therefore, trademarks should never be used as the name or function of a product, but it is permissible for the trademark to modify the name of the product, e.g. ASPIRIN® brand acetylsalicylic acid.

Even though under Canadian law it is not necessary to do so, trademarks should be denoted with the ® or TM symbol wherever they are used. Furthermore, it is advisable to identify the owner of the mark, particularly if it is used by a licensee.

Licensing a Trademark

The Canadian Trademarks Act no longer requires recordal of licensees as registered users. The Act simply requires that where a trademark owner has licensed others to use its trademark, the trademark owner must maintain direct or indirect control over the character or quality of the goods or services associated with the mark.

Also, special considerations arise regarding the proper notice to be employed in relation to the licensed goods or services when a trademark is used by a licensee.

Enforcing Trademark Rights

Actions for infringement of a registered trademark are generally brought in the Federal Court, and the Trademarks Act provides remedies including damages or profits, delivery up of all infringing goods and injunctive relief against further unauthorized use of the infringing mark.

Infringing goods may also be detained by Canada Customs at their point of entry into the country.

Where the rights to an unregistered trademark, trade name, or business name are violated, the proprietor of the mark or name is entitled to bring an action for the tort of passing-off against the party. Such tort actions must be brought in provincial superior court.

In an action for passing-off, the plaintiff must prove not only that the defendant's mark is likely to cause confusion between their respective businesses, but must also prove that the public exclusively associates the mark with the goods or services of the plaintiff.

Some of Canada's most important trademark litigation has reached successful conclusion in the hands of Bereskin & Parr LLP lawyers. Our extensive courtroom experience is not confined to major cases; simple disputes receive equal attention and concern. Before commencing any litigation, however, we carefully review all options available to the client, including negotiation and alternative dispute resolution. When litigation is necessary, we carefully plan the strategy with the client, work in a cost-effective manner, and always treat the client as an essential member of the litigation team.

This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Contact the Author?
Click here to email the Author
In Association with
In Partnership with
Supporting Documents
Other Canada Advice Centres
Competition and Antitrust
Mergers and Acquisitions
Labour and Employment
More Advice Centers
Significant Recent Cases
Bereskin & Parr has extensive experience in intellectual property litigation. The firm's litigation group advises on and acts in all types of intellectual property matters, from simple trademark disputes to major patent infringement cases.
A list of the most significant cases.
A list of the most recent Trademark cases.
A list of the most recent copyright cases.
Useful Resources
INTA is a global association of trademark owners and professionals.
WIPO is the global forum for intellectual property services, policy, information and cooperation.
The Canadian Intellectual Property Office is the patent, trademark, and copyright administration body of Canada.
This database lets you access 94 years of patent descriptions and images. You can search, retrieve and study more than 2,180,000 patent documents.
Non-Canadians looking to acquire control of an existing Canadian business or who wish to establish a new Canadian business are conditioned by this Act, and must submit either a Notification or an Application for Review.
Upcoming Events
A list of all upcoming Canadian Bar Association events for Professional Development.
Detailed lists and descriptions of all upcoming events.
Tools
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.