Canada: Trade Marks 2018, Law And Practice

1. Types of Trade Marks & Registration

1.1 Types of Trade Marks

The Trade-marks Act (RSC 1985, c T-13) (the "Act") and the Trade-marks Regulations (SOR/96-195) (the "Regulations") provide for registrability and enforceability of registered and unregistered marks within Canada, and are supplemented by common law and additional federal and provincial laws.

Trade marks can comprise:

  • words, sounds, designs (including colour as a feature) or a combination of these used to distinguish the goods or services of one person or organisation from those of others;
  • certification marks (known in some jurisdictions as "collective marks"), which can be licensed to individuals or business entities for the purpose of showing that certain goods or services meet a defined standard; and
  • distinguishing guises/trade dress, which protect the shape of goods or their containers, or a way of wrapping or packaging goods.

The word "mark" is also used to refer to:

  • a geographical indication;
  • a mark protected by a federal act of incorporation;
  • a mark protected by an act respecting the Royal Canadian Legion; and
  • a prohibited mark.

Amendments to the Act projected to come into force in 2019 would augment eligibility for registration of a "sign" to include a word, personal name, design, letter, numeral, colour, figurative element, three-dimensional shape, hologram, moving image, mode of packaging goods, scent, taste and texture, positioning of a sign as well as a certification mark that is proposed to be used. Proposed Trade-marks Regulations have been published for public consultation, setting out rules of general application, affecting implementation of the Madrid Protocol and providing transitional provisions, repeal and coming into force of the amendments.

The Canada–European Union Comprehensive Economic and Trade Agreement (CETA) Implementation Act entered into force in Canada on 21 September 2017 to:

  • protect EU geographical indications found in Annex 20-A of CETA;
  • provide a mechanism to protect other geographical indications with respect to agricultural products and foods;
  • provide for new grounds of opposition, a process for cancellation, exceptions for prior use for certain indications, for acquired rights and for certain terms considered to be generic; and
  • transfer the protection of the Korean geographical indications listed in the Canada–Korea Economic Growth and Prosperity Act into the Act.

Marking requirements for goods such as precious metals, textiles, food, drugs and plants, and for delivery of services such as banking, gaming, use of packaging and labelling, and selection of business names are to be found in other federal and provincial legislation that coexists with the Act. For example, clearance of pharmaceutical names should be undertaken with the Canadian Intellectual Property Office (CIPO) and Health Canada, as each department of the federal government applies independent criteria for approval. Reference to "banking" services in an application should indicate compliance with the federal Bank Act. Reference to "lotteries" suggests an activity that is regulated by each of the provinces.

1.2 Trade-Mark Rights

Most trade-mark rights arise through use independent of registration. Rights in an unregistered mark arise under common law from use of the mark in Canada. Such common law rights only extend to the geographic area in which the mark enjoys goodwill or reputation. The Québec Civil Code and Charte de la langue française should be consulted with respect to the use of trade marks in Québec. Because rights arise in the absence of registration, it is useful to search be- yond the Trademarks Database maintained by CIPO and to do so in both official languages, as the average consumer is deemed to be bilingual.

Unregistered marks may be more limited in venue of en- forceability. Unregistered rights arise in the venue of use under passing off, whereas trade mark registration extends protection across the country, unless expressly restricted (eg, by registration or consent). Use in social media has in- creased the potential for enforcement of marks used and made known through internet communication received in Canada.

Registration is (currently) required for certification marks and recording is required by a public authority for a mark to be noted as "advertised" (rather than registered) on the CIPO database.

Registration supplements the options available for enforce- ment, conferring rebuttable presumptions and access to the Federal Court. Registration is required to assert depreciation of goodwill associated with a mark. In addition, a regime for obtaining assistance from border protection authorities with respect to counterfeit goods is available to owners of registered trade marks. To enlist the assistance of the Cana- da Border Services Agency (CBSA) in detaining suspected shipments of counterfeit products, a request must be pre- sented to the CBSA together with trade mark and copyright particulars.

1.3 Standards for Registering

Depending on the type of mark, objections may be encoun- tered by an applicant for registration during examination and prior to allowance of a mark, if opposed.

Certification marks must be used prior to filing (such a re- quirement will change when the amendments to the Act come into effect). The applicant cannot use the mark itself and must disclose the standards on which certification is based.

A public authority can secure a mark without undergoing opposition proceedings (a mark is noted on the CIPO data- base as "advertised" rather than registered) and benefit from protection that does not expire, and that is not limited to one or more classes of goods or services.

An applicant for a "famous mark" can be faced, during pros- ecution, with objections by the examiner or oppositions al- leging that the mark is not registrable or that the applicant is not the person entitled to registration of the mark. Fame per se does not negate the need to refute likelihood of confusion, in view of the consumer protection element of Canadian trade mark law.

To register a distinguishing guise as a trade mark, the ap- plicant must present evidence demonstrating that the dis- tinguishing guise has acquired distinctiveness and actually serves to distinguish the goods of the applicant from those of others. Probable purchasers would include resellers and the consumers.

During the examination phase, an applicant may receive notification from CIPO setting out the bases for an exam- iner's objections (technical, absolute and relative grounds) and deadlines within which to respond. Time extensions to respond may be available during examination.

Evidence, such as incorporation of a name or use as a sur- name, may be filed to support the argument that a mark has acquired distinctiveness to overcome objections on the grounds of descriptiveness. Approval for advertisement and allowance by the registrar are discretionary.

To view the full article, please click here

Originally published in Chambers & Partners 2018 Global Practice Guide

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be ought about your specific circumstances.

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Authors
Andrea Rush
Events from this Firm
6 Feb 2019, Other, Toronto, Canada

When it comes to class actions, costs regimes vary across Canada. Ontario follows the traditional two-way costs regime while other jurisdictions like British Columbia have adopted a no cost regime.

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