1 Relevant Authorities and Legislation
1.1 What is the relevant Canadian trade mark authority?
The Canadian Intellectual Property Office ("CIPO"), an agency of Industry Canada, is responsible for the administration and processing of intellectual property in Canada. The Office of the Registrar of Trademarks (the "Registrar") oversees the trademark process in Canada and is the governing authority on matters relating to trademarks.
1.2 What is the relevant Canadian trade mark legislation?
The Canadian Trade-marks Act, R.S.C. 1985, c. T-13, as amended is the relevant Canadian trademark legislation.
Bill C-31, a federal bill which will, among other things, implement significant changes to the Canadian trademarks regime, received Royal Assent on June 19, 2014. The date on which the Bill, Economic Action Plan 2014 Act, No. 1, will be proclaimed in force has not yet been announced, but it is likely that full implementation of the Bill will occur in late 2016 or 2017, when the regulations have been finalised.
On January 1, 2015, the border enforcement provisions of Canada's Combating Counterfeit Products Act ("CCPA") came into force.
There is no provincial legislation that specifically relates to trademarks, but provincial legislation does require the registration of business names. Registration of a trade name is different from registration of a trademark in that it is merely a recordal of the business name. It confers no statutory monopoly, unlike a trademark registration.
The Province of Quebec has a Charter of the French Language which applies to trademarks as it requires that every inscription on a product, its container or packaging, or on a document supplied with it, be in French. There is an exception to the mandatory use of French for "recognised" trademarks. This is generally considered to mean that the English version of a trademark may be used in the Province of Quebec if a trademark application has been filed or a registration has been obtained for the English version of the mark.
2 Application for a Trade Mark
2.1 What can be registered as a trade mark?
The following can be registered as a trademark: a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed from those manufactured, sold, leased, hired or performed by others; b) a certification mark; c) a distinguishing guise; or d) a proposed trademark. These can include word marks, design marks, sound marks, the shaping of goods or their containers or packaging.
When the amended Trademarks Act comes into force, the definition of trademarks will be expanded to include various non-traditional trademarks, including colour, three-dimensional shapes, holograms, scents, tastes, textures and more.
2.2 What cannot be registered as a trade mark?
The following cannot be registered as trademarks:
a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding 30 years;
b) a trademark that is, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
c) the name in any language of any of the goods or services in connection with which it is used or proposed to be used;
d) a mark that is confusing with a registered trademark or prior pending trademark application;
e) a mark that is the same or very similar to marks that are protected by sections 9 or 10 of the Trade-Marks Act (these include Royal Arms, Crests or Standards, flags, symbols of the Canadian armed forces, universities and "official marks" of Canadian public authorities, Olympic marks and marks that are scandalous, obscene or immoral);
f) protected geographical indications for wines and spirits; and
g) plant varieties protected under the Plant Breeders' Rights Act.
Marks that fall within categories a) or b) above may be registered if evidence can be filed to establish that the mark had acquired distinctiveness through use of the mark in Canada such that it was distinctive at the time the application was filed.
Alternatively, if the mark has been registered by the applicant in its country of origin, it may be registrable in Canada if it is not confusing with a registered trademark, is not without distinctive character, and it is not contrary to morality or public order or of such a nature as to deceive the public.
2.3 What information is needed to register a trade mark?
The following information is required in a trademark application:
(a) the trademark; if it is a logo or design mark, an electronic copy of it is required;
(b) the full name of the applicant and the address of its principal office or place of business;
(c) details of any predecessor in title to the present owner of the trademark;
(d) the date of first use of the trademark in Canada, if any;
(e) priority claims;
(f) colour claims;
(g) if the application is based on foreign use and registration, details of the foreign registration or pending application; and
(h) a description of the goods and/or services in association with which the mark is being used in Canada or is intended to be used.
The application is then submitted to the Canadian Trademarks Office along with the appropriate government filing fee.
2.4 What is the general procedure for trade mark registration?
Examination: after an application is filed, it is assigned to a Trademarks Office Examiner and is examined for compliance with formalities. Within six to eight months, the applicant will receive either an Examiner's report or an Approval Notice. An Examiner's report raises any issues or objections relating to the application. A response to the Examiner's report addressing the issues or objections raised by the Examiner must be filed within six months. If there are no issues or objections raised by the Examiner, the application will be approved for advertisement.
Approval for advertisement: when the application is approved, it is advertised in the Canadian Trademarks Journal. Third parties (such as other trademark owners) then have an opportunity to oppose the application within two months of its advertisement.
Allowance: if no opposition proceedings are initiated, or once all oppositions are overcome, the application will be allowed for registration. The Trademarks Office will issue a Notice of Allowance and request, in some instances, proof of use of the trademark in the form of a declaration of use, and payment of the registration fee.
Registration: following payment of the registration fee and filing of the declaration of use, as necessary, the application will register and the Trademarks Office will issue a Certificate of Registration for the trademark. Subject to continued use of the trademark, the registration will be valid for 15 years.
Maintenance and renewal: the initial trademark registration period is 15 years. However, to maintain a valid trademark registration, there must be continued use of the trademark. Upon the expiry of the initial registration period, a trademark registration can be renewed for consecutive 15-year periods indefinitely. Continued use will be required to maintain the validity of the registration. When the amended Trademarks Act comes into force, the trademark registration and renewal terms will be reduced to 10 years.
2.5 How can a trade mark be adequately graphically represented?
A formal drawing of the design should be in black and white and include a description of the colour(s) if colour is claimed as a feature of the mark. Drawings should be as large as possible, but should not exceed 22 cm x 35 cm (8.5 inches x 14 inches).
2.6 How are goods and services described?
The specific goods and services are to be described in ordinary commercial terms in the application. Currently Canada does not use the International Classification of goods and services, but it will do so when the amended Trademarks Act comes into force.
CIPO provides a Wares and Services Manual on its website at www.ic.gc.ca to provide guidance and on August 25, 2014, CIPO joined TMclass, an online tool that allows trademark applicants to verify whether a particular description is acceptable.
2.7 What territories (including dependents, colonies, etc.) are or can be covered by a Canadian trade mark?
Registration in Canada confers a monopoly on the trademark owner, which is the exclusive right to use the mark, as registered, throughout Canada and, conversely, the right to prevent others from using a confusingly similar mark.
2.8 Who can own a Canadian trade mark?
The applicant can be an individual, a company, a partnership, a trade union or any lawful association engaged in trade or business or the promotion thereof. The Registrar does not allow the applicant to be more than one individual, unless the individuals form a partnership or are engaged in a joint venture.
2.9 Can a trade mark acquire distinctive character through use?
Yes, a trademark can acquire distinctiveness through use. A trademark that is not registrable by reason of it being a name or surname, clearly descriptive or deceptively misdescriptive can be registered if it has been so used in Canada to have become distinctive at the date of filing the application.
2.10 How long on average does registration take?
On average, it takes 12 to 18 months to obtain a registration if no complicated Examiner's reports are issued and no opposition proceedings are initiated.
2.11 What is the average cost of obtaining a Canadian trade mark?
The average cost to obtain a Canadian trademark registration is Cdn$2,000 provided that no complicated Examiner's reports are issued and no opposition proceedings are initiated.
2.12 Is there more than one route to obtaining a registration in Canada?
No, there is only one Trademarks Register in Canada. There is no Supplemental Register and no Provincial Registers as in the United States.
2.13 Is a Power of Attorney needed?
No, it is not.
2.14 How is priority claimed?
A person who has filed a trademark application in his/her country of origin may claim the priority filing date of the first foreign application in his/her Canadian application, provided that the Canadian application is filed within six months of the first application and the country in which the first foreign application was filed is a member of the Paris Convention or the World Trade Organisation.
2.15 Does Canada recognise Collective or Certification marks?
Canada recognises Certification marks.
3 Absolute Grounds for Refusal
3.1 What are the absolute grounds for refusal of registration?
Registration can be refused on the basis of the following grounds:
a) the trademark is a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding 30 years;
b) the trademark is, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive of the character or quality of the goods or services in association with which it is used or proposed to be used, or of the conditions of or the persons employed in their production or of their place of origin;
c) the trademark is the name in any language of any of the goods or services in connection with which it is used or proposed to be used;
d) the trademark consists of a protected geographical indication for wines and spirits; or
e) the trademark consists of plant varieties protected under the Plant Breeders' Rights Act.
3.2 What are the ways to overcome an absolute grounds objection?
Submissions may be filed with the Registrar asserting argument to overcome the objections raised by the Trademarks Office Examiner on the basis of the grounds for refusal set out above.
Marks that fall within the categories listed in question 2.2 a) or b) above (name or surname or clearly descriptive or deceptively misdescriptive) may be registered if evidence can be filed to establish that the mark had acquired distinctiveness through use of the mark in Canada such that it was distinctive at the time the application was filed.
Alternatively, if the mark has been registered by the applicant in its country of origin, it may be registrable in Canada if it is not confusing with a registered trademark, is not without distinctive character, and it is not contrary to morality or public order or of such a nature as to deceive the public.
3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
A decision of the Registrar may be appealed to the Federal Court of Canada within two months from the date on which notice of the decision of the Registrar is delivered.
3.4 What is the route of appeal?
A notice of appeal is filed with the Federal Court of Canada and served on the Registrar.
4 Relative Grounds for Refusal
4.1 What are the relative grounds for refusal of registration?
The relative grounds for refusal of registration are:
a) the trademark is confusing with a registered trademark, prior pending trademark application, or a trademark previously used or made known in Canada; and
b) the trademark is the same or very similar to marks that are protected by sections 9 or 10 of the Trade-Marks Act (these include Royal Arms, Crests or Standards, flags, symbols of the Canadian armed forces, universities and "official marks" of Canadian public authorities, and Olympic marks).
4.2 Are there ways to overcome a relative grounds objection?
Submissions may be filed with the Registrar asserting arguments to overcome the objections raised by the Trademarks Office Examiner on the basis of the grounds for refusal set out above. If the objections are raised in opposition proceedings, the applicant has an opportunity to respond by filing a counter statement, evidence and written submissions.
4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
A decision of the Registrar may be appealed to the Federal Court of Canada within two months from the date on which notice of the decision of the Registrar is delivered.
4.4 What is the route of appeal?
A notice of appeal is filed with the Federal Court of Canada and served on the Registrar.
5 Opposition
5.1 On what grounds can a trade mark be opposed?
The grounds of opposition include:
a) The application does not comply with the formal requirements of section 30 of the Trade-marks Act, such as the description of goods and services in ordinary commercial terms, the applicant did not use the trademark in Canada since the stated date of first use, the applicant did not use the mark in its country of origin when the application is based on foreign use and registration.
b) The trademark is not registrable on the basis of the absolute grounds set out above.
c) The trademark is not registrable on the basis of the relative grounds set out above.
d) The trademark is not distinctive.
5.2 Who can oppose the registration of a Canadian trade mark?
Any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.
5.3 What is the procedure for opposition?
Within two months after a trademark application is advertised in the Trademarks Journal, an opponent can initiate an opposition by filing a statement of opposition and the prescribed fee. The applicant can then file a counter statement. Both the opponent and the applicant are given an opportunity to file evidence, cross-examine affiants, file written submissions and appear at an oral hearing.
6 Registration
6.1 What happens when a trade mark is granted registration?
CIPO issues a certificate of registration when a trademark is granted registration.
6.2 From which date following application do an applicant's trade mark rights commence?
A trademark owner has rights in a trademark by virtue of its use of the mark in Canada. Those rights are limited in scope to the geographic area in which the trademark owner has so used a mark as to establish a reputation in association with it. Once a trademark is registered, the owner of the registration has the exclusive right to use the mark as registered across Canada.
6.3 What is the term of a trade mark?
The current term of a trademark registration is 15 years, but the amended Trademarks Act will reduce the term to 10 years.
6.4 How is a trade mark renewed?
A trademark registration is renewed by filing a renewal fee prior to the end of the term or within the subsequent six-month grace period. No proof of use is filed to renew the registration.
7 Registrable Transactions
7.1 Can an individual register the assignment of a trade mark?
CIPO will record an assignment upon request and payment of the $100 fee per mark. The assignment document must be filed with CIPO.
7.2 Are there different types of assignment?
The Trade-marks Act does not prescribe a specific form of assignment, so the terms of assignment can vary.
7.3 Can an individual register the licensing of a trade mark?
An individual can request that CIPO record a licence agreement relating to a trademark, but this is rarely done. Recordal of a licence agreement does not create rights. It merely gives notice of the licence agreement itself.
7.4 Are there different types of licence?
Yes. The Trade-marks Act does not contain any limitations relating to trademark licences other than it must be done with the authority of the trademark owner and the owner has, under the licence, direct or indirect control of the licensed goods or services.
7.5 Can a trade mark licensee sue for infringement?
The licence agreement often addresses this issue. If it does not, the licensee can ask the trademark owner to initiate infringement proceedings. If the owner does not do so within two months, the licensee can initiate proceedings in its own name.
7.6 Are quality control clauses necessary in a licence?
Yes. The licensor must have, under the licence, direct or indirect control of the licensed goods or services.
7.7 Can an individual register a security interest under a trade mark?
CIPO can be requested to record a security interest in a trademark by filing a copy of the security agreement and paying the prescribed fee. Recordal of a security interest does not create rights, nor does it perfect the security interest, but it does give notice of the existence of the security interest.
7.8 Are there different types of security interest?
Yes. The Trade-marks Act does not address the form of a security interest.
8 Revocation
8.1 What are the grounds for revocation of a trade mark?
A trademark registration can be revoked on the basis that it has not been used in Canada or on the basis of invalidity.
8.2 What is the procedure for revocation of a trade mark?
The procedure relating to invalidity is addressed in question 9.2 below.
There is a summary procedure in section 45 of the Trade-marks Act. When a mark has been registered for three years or more, the Registrar may issue a section 45 notice at any time or upon receipt of a request to issue a section 45 notice. The section 45 notice requests that the registrant file evidence of use of the trademark in Canada within the three years prior to the date of the notice or provide evidence showing proof of special circumstances excusing the non-use of the mark.
Failure to reply will result in expungement of the registration. If evidence is filed, the registrant and the requesting party have the opportunity to file written submissions and appear at an oral hearing. The Registrar may expunge, amend or maintain the registration.
8.3 Who can commence revocation proceedings?
Any person can request that the Registrar initiate a section 45 proceeding, upon payment of the prescribed fee.
8.4 What grounds of defence can be raised to a revocation action?
The evidence filed by the registrant must show use of the trademark in Canada, in association with the goods and services covered by the registration, within the three-year period prior to the issuance of the section 45 notice. Alternatively, if there has been no use, the evidence must establish special circumstances to excuse the nonuse.
The evidence is filed in the form of an affidavit or statutory declaration.
8.5 What is the route of appeal from a decision of revocation?
A decision of the Registrar may be appealed to the Federal Court of Canada within two months from the date on which notice of the decision of the Registrar is delivered.
9 Invalidity
9.1 What are the grounds for invalidity of a trade mark?
The grounds are that the entry on the Trademarks Register does not accurately express or define the existing rights of the person appearing to be the registered owner of the trademark in that the trademark:
a) was not registrable at the date of registration;
b) is not distinctive;
c) has been abandoned; or
d) the applicant was not the person entitled to registration of the trademark.
9.2 What is the procedure for invalidation of a trade mark?
An application or an action claiming additional relief is initiated in the Federal Court of Canada.
9.3 Who can commence invalidation proceedings?
Any "person interested" can commence an application or an action claiming additional relief in the Federal Court seeking an order that an entry on the Trademarks Register be struck out or amended. A "person interested" is one who is affected or reasonably apprehends that they may be affected by an entry in the Trademarks Register.
9.4 What grounds of defence can be raised to an invalidation action?
The defence grounds include evidence that the trademark:
a) was registrable at the date of registration;
b) is distinctive;
c) has not been abandoned; or
d) the applicant was the person entitled to registration of the trademark.
9.5 What is the route of appeal from a decision of invalidity?
A decision of the Federal Court can be appealed to the Federal Court of Appeal without leave.
10 Trade Mark Enforcement
10.1 How and before what tribunals can a trade mark be enforced against an infringer?
Proceedings for infringement of a registered trademark can be initiated in the Federal Court or in any court of competent jurisdiction of a Province or Territory. An action for passing off relating to unregistered trademarks at common law can be initiated in courts of competent jurisdiction in a Province or Territory. The Federal Court has jurisdiction to hear an action for passing off pursuant to section 7(b) of the Trade-marks Act.
10.2 What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?
Pleadings will be filed by the parties, followed by discovery of documents, examinations for discover and, in some cases, the exchange of expert reports. It currently takes approximately three to four years to reach trial but trials can be expedited in some cases.
10.3 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?
Interlocutory injunctions and permanent injunctions are available. An interlocutory injunction may be granted if:
a) there is a serious issue to be tried;
b) the applicant would suffer irreparable harm if the application were refused; and
c) the balance of convenience as between the parties favours the grant of an injunction.
10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?
Yes, relevant documents must be produced at the discovery stage.
10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?
Submissions and evidence are presented both in writing and orally. Witnesses may be cross-examined.
10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?
The Federal Court has discretion to grant a stay on the ground that the claim is being prosecuted in another court or jurisdiction.
10.7 After what period is a claim for trade mark infringement time-barred?
As the Trade-marks Act does not address the issue of limitation periods, the Federal Court Act or the relevant Provincial limitation period legislation is applicable. The applicable legislation will depend on where the infringement occurred and what court the action was initiated in.
As trademark infringement actions usually involve ongoing infringement and a cause of action arises with each repetition of the infringement, the issue of limitation periods is not often one that is raised in the context of such actions.
10.8 Are there criminal liabilities for trade mark infringement?
The CCPA has introduced new criminal offences under the Trademarks Act for manufacturing, selling, importing, exporting or possessing counterfeit goods, labels or packaging. The CCPA received royal assent on December 9, 2014 but this aspect of the CCPA has not yet been proclaimed in force. It will provide for fines of up to one million dollars and imprisonment terms of up to five years.
10.9 If so, who can pursue a criminal prosecution?
Criminal prosecutions are handled by the Attorney General of Canada.
10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?
Section 7(a) of the Trade-marks Act prohibits the making of false or misleading statements tending to discredit the business, wares or services of a competitor.
11 Defences to Infringement
11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?
The grounds of defence include establishing that the marks in issue are not confusingly similar.
11.2 What grounds of defence can be raised in addition to non-infringement?
The grounds of defence include invalidity of the registration relied upon to support the infringement claim and title issues with respect to the plaintiff's ownership of the registration relied upon.
12 Relief
12.1 What remedies are available for trade mark infringement?
The courts can grant the remedies of an injunction, damages or profits, delivery up of offending material and costs.
12.2 Are costs recoverable from the losing party and if so what proportion of the actual expense can be recovered?
Yes. Cost awards are granted at the discretion of the court.
Typically, approximately one third of the actual expense can be recovered through a cost award.
13 Appeal
13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?
Appeals from decisions of the Federal Court are to the Federal Court of Appeal. Appeals from Provincial courts are to the Court of Appeal in that Province. Appeals are based on errors of law. Findings of fact can be overturned if there was a "palpable and overriding error".
13.2 In what circumstances can new evidence be added at the appeal stage?
New evidence can be filed in appeals to the Federal Court from decisions of the Registrar in oppositions or section 45 proceedings.
14 Border Control Measures
14.1 What is the mechanism for seizing or preventing the importation of infringing goods or services and if so how quickly are such measures resolved?
As of January 1, 2015, Canada has a new border enforcement regime pursuant to the CCPA. To alert rights holders of possible infringements, the Canada Border Services Agency (the "CBSA") can now accept Requests for Assistance ("RFAs") from owners of Canadian copyright-protected works and owners of registered Canadian trademarks. These rights are recorded with the CBSA and if suspected counterfeit goods are discovered, the rights holder will be contacted. The rights holder can then pursue remedies under the Copyright Act or the Trademarks Act, or both.
There is currently no fee to file an RFA and there is no limit on the number of copyrighted works or registered trademarks that can be referred to in an RFA. When an RFA is recorded, it is valid for two years and can be extended for additional two-year periods.
The CBSA may seize and detain goods at the Canadian border for a limited time if they are suspected of being counterfeit. The CBSA will provide rights holders who have filed RFAs with a sample of the detained goods and information about the goods. Detention of the goods is limited to ten (10) days or five (5) in the case of perishable goods. The rights holder can request an additional ten (10) days, but court proceedings must be commenced in order to detain the goods further.
The rights holders will be liable for storage, handling and destruction of goods and may be required to provide security to cover this liability.
These practical measures significantly enhance the ability of intellectual property owners to protect their rights in Canada.
15 Other Related Rights
15.1 To what extent are unregistered trade mark rights enforceable in Canada?
Unregistered trademark rights are enforceable in Canada through the common law action of passing off and through section 7(b) of the Trade-marks Act, which codifies the common law of passing off. Three elements are required to prove passing off: a) a pre-existing reputation in the trademark; b) deception or confusion of the public, whether intentional or not; and c) actual or potential damage to the plaintiff.
15.2 To what extent does a company name offer protection from use by a third party?
A company name can be protected through passing off to the extent that it has been used as a trademark and meets the criteria in question 15.1 above.
15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?
No, there are not.
16 Domain Names
16.1 Who can own a domain name?
To obtain a .ca domain name, the applicant must meet the Canadian presence requirements.
16.2 How is a domain name registered?
The Canadian Internet Registration Authority ("CIRA") is responsible for .ca domain names. An applicant must use a CIRAcertified registrar to obtain a .ca registration.
16.3 What protection does a domain name afford per se?
A domain name that is used as a trademark and that is registrable as a trademark is afforded the same protection as a trademark.
17 Current Developments
17.1 What have been the significant developments in relation to trade marks in the last year?
The most significant developments in the past year have been the two pieces of legislation that received Royal Assent: the CCPA; and the Bill, which is Bill C-31, resulting in the Amended Trademarks Act.
CIPO published draft regulations to the Amended Trademarks Act on October 1, 2014. The regulations address procedures related to the changes to the Trademarks Act required under Bill C-31. Trademark owners should consider their Canadian trademark portfolio and protection of it through registration now, as the amendments to Canadian trademark legislation will fundamentally alter the trademark regime in Canada. As it is expected that the amendments will lead to: 1) greater complexity in assessing trademark rights in Canada; 2) higher prosecution costs for multiclass applications; and 3) an increase in the number of applications filed in Canada, it is recommended that Canadian applications be filed sooner rather than later.
The amendments will harmonise Canada's process with the standard procedures in the Singapore Treaty on the Law of Trademarks (the "Singapore Treaty") and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the "Nice Agreement"). They will also allow for implementation of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the "Madrid Protocol"), which will permit Canadian brand owners access to an international system of trademark registration. The amendment that has raised the greatest concern and which may result in the potential for increased cost, complexity, and uncertainty associated with obtaining, maintaining and enforcing trademark rights is the elimination of the requirement that there be use of a trademark, in Canada or elsewhere, before a registration can be obtained.
Trademark use will continue to be used in determining entitlement in opposition proceedings and infringement proceedings, and a registration will continue to be subject to challenge through a Section 45 proceeding on the basis of non-use three years after registration. However, applicants will not have to indicate a "date of first use" in a trademark application, will not have to indicate whether the application is filed on the basis of use or proposed use, and will not have to provide any details of any use or registration of the mark abroad.
The amendments will increase uncertainty, and will result in costly investigations associated with trademark clearance searches as well as risk analysis relating to opposition proceedings and infringement actions. The uncertainty stems from the fact that the test for entitlement depends on the first use date, yet dates of first use of trademarks will no longer be available on the Trademarks Register as that information no longer has to be supplied when a trademark application is filed. Further, no declaration of use has to be filed. The only way to obtain use information will be to arrange for costly investigations.
A second implication of the removal of the use requirement will be a flood of registrations following the legislation coming into force. All of the currently pending applications that have been allowed will be able to proceed directly to registration upon payment of the registration fee, as declarations of use will no longer have to be filed.
Thirdly, with no use requirement, applicants may file overly broad applications covering numerous goods and services that they have no intention to offer in Canada in association with the applied for trademark.
For all of these reasons, it is recommended that any key trademarks in Canada be protected through registration sooner rather than later, as the new regime is likely to result in: 1) increased filings; 2) registration of numerous pending applications that have been allowed; and 3) overbroad applications covering a multitude of goods and services that the applicants may have no intention of offering in association with the applied for trademark.
17.2 Please list three important judgments in the trade marks and brands sphere that have issued within the last 18 months.
Unicast SA v. South Asian Broadcasting, [2014 FC 295]. TCC Holdings Inc. v. The Families as Support Teams Society, [2014 FC 830].
Red Label Vacations Inc. v. 411 Travel Buys Limited, [2015 FC 19].
17.3 Are there any significant developments expected in the next year?
CIPO may seek further consultation on the draft Regulations to the Amended Trademarks Act and additional provisions of the CCPA may be proclaimed in force in 2015.
17.4 Are there any general practice or enforcement trends that have become apparent in Canada over the last year or so?
No, but through the Amended Trademarks Act, the Canadian government has made changes that will impact almost every aspect of trademark practice in Canada when the legislation is proclaimed in force, likely in 2016 or 2017.
Previously published by Global Legal Group Ltd, London
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
