Canada: Ten Things Brand Owners Should Know Before Using The Madrid Protocol To Obtain Rights In Canada

Last Updated: May 3 2019
Article by Cynthia Rowden, Terry Edwards and Meghan Dillon

As of June 17, 2019, Canada will formally become a member of the Protocol relating to the Madrid Agreement Concerning International Registration of Marks ("Madrid Protocol"), along with the Singapore Treaty on the law of Trademarks and the Nice Agreement Concerning International Classification of Goods and Services for the Purposes of the Registration of Marks On the same day, major amendments to Canada's Trademarks Act will be implemented that impact filing, examination and opposition procedure for all brand owners. 

While new access to the Madrid Protocol system in Canada may offer cost savings and efficiencies to international trademark owners, Canada's registration system has, and will continue to have, many unique features that should be considered, whether filing a domestic Canadian application or extending rights to Canada under the Madrid Protocol. To navigate these unique features, some of the most important of which are listed below, it is advisable to get sound local advice

  1. An application may be filed by a person who is using, or proposes to use, and is entitled to use their mark in Canada.

    As of June 17, 2019, use requirements for registration in Canada will be eliminated. Use is not required at filing, and declarations of use will no longer be required before registration. However, that does not mean that use is meaningless. Opposition grounds will include the applicant's failure to use or have an intention to use its mark in Canada. This will apply to all applicants, including those using the Madrid Protocol.
    TIP: Ensure applicants are aware in advance of such use/intent requirements – without them, their applications could be invalid. 
  2. Registration and use in Canada is impacted by both unregistered and registered trademarks and tradenames.

    All applications, including those that will be filed under the Madrid Protocol, are examined by the Trademarks Branch of the Canadian Intellectual Property Office (CIPO) for confusion with both registrations and previously filed applications.In addition, owners of unregistered trademarks and tradenames may not only oppose any application, but may challenge use based on their common law rights. Pre-clearance searches are recommended, not only of the Register, but of databases of unregistered names and marks.
    TIP: Search before you file. Being aware of prior rights may permit applicants to adopt strategies before filing that improve both the chance of registration, and reduce the risk of litigation against use. 
  3. Registrability tests in Canada differ significantly from those in many other countries.

    The registrability criteria under the Trademarks Act includes name/surname, descriptive or generic significance, similarity to special marks of government agencies and universities, and inherent distinctiveness, which is a new examination criteria. CIPO will have the right to request evidence of acquired distinctiveness in Canada at the filing date for all non-traditional marks, plus any mark it views as inherently non-distinctive. Such evidence must show significant sales and advertising across Canada before filing.
    TIP: Applicants for marks with name, surname, or geographic significance, or that fall into non-traditional categories should expect to encounter tough examination issues in Canada that can mean delays and added costs. Local advisors can offer strategies on avoiding objections that can mean big cost-savings in the long-run. 
  4. Applications may be opposed, and registrations attacked, based on bad faith.

    As a remedy against squatters or trademark trolls, the Trademarks Act was recently amended to permit expungement on the ground that the application was filed in bad faith and as of June, opposition grounds will also include bad faith filing. It will take some time to develop predictable guidelines on what amounts to bad faith, and the onus will always be on the party alleging bad faith to file evidence to support that claim. However, an indicator of bad faith may be the number of applications filed and/or the number of classes covered in any application.
    TIP: Warn applicants that the practice of filing for overly broad goods and services may be viewed as an indicator of bad faith.
  5. Examination in Canada is slow, and oppositions can take many years to resolve

    Currently, it takes the Trademarks Branch more than a year to examine new applications. Opposition proceedings commonly last more than 3 years. As a result, Canada has elected a period of 18 months within which to send a notice of provisional refusal to the International Bureau of the World Intellectual Property Organization, and it is expected that all Protocol Applications will be examined by a specific team.
    TIP: Remind applicants that using the Madrid Protocol, vs. a national filing in Canada, is unlikely to result in faster registration. The pace of both Canadian examination and oppositions are slower than in many foreign countries. 
  6. Canadian goods and services descriptions require more detail than in many other countries.

    The Trademarks Branch is known for rigorous examination for specificity. Class headings, or even broad descriptions such as "clothing", accepted in other jurisdictions are not permissible in Canada. Classification is now voluntary, but will become mandatory as of June 17th . Be aware that the Trademarks Branch occasionally refuses classification that has been accepted in other countries.
    TIP: Consider Canadian Goods and Services requirements before filing.
  7. Protocol Applications in Canada may include priority claims that predate Canada's membership in the Madrid Protocol.

    Despite not formally implementing the Madrid Protocol until June 17, 2019, convention priority claims from applications filed before that date can be asserted.
    TIP: Don't lose rights by forgetting to claim priority.
  8. All Canadian registrations, including those based on the Protocol, are vulnerable to non-use cancellation after 3 years. 

    Summary non-use cancellation proceedings may be started 3 years from the date of any Canadian registration (s. 45 of the Trademarks Act), which is earlier than the first date to challenge marks for non-use in many other countries. These proceedings are commonly used to remove obstacles to registration, but can also be a tactic to limit the ability of a third party to rely upon a registration in litigation. Any person, including the Registrar, may initiate these proceedings. Once notified that these proceedings have commenced, the registrant must show use of its mark in Canada in the 3 years prior to the notice, or extraordinary reasons to excuse non-use.Registrations may be cancelled, or limited to only goods/services in use. There are special exceptions to non-use challenges for cannabis and tobacco marks if such marks cannot be used due to compliance with other legislation.
    TIP: There are several ways to invalidate a registration, including non-use, prior rights, loss of distinctiveness, and inherent registrability issues relating to the mark itself. Avoid the risk of cancellation or invalidation by checking first with local counsel before making any infringement complaint. 
  9. Enforcement generally depends on use in Canada. 

    While simplified registration procedures, including by using the Madrid Protocol, may make it easier to acquire trademark rights in Canada, ultimately, enforcement depends on use.Before registration, common law rights can be asserted in a passing off action, but depend on goodwill that generally only exists with use in Canada. Once a registration issues, new amendments will require use in Canada in the first 3 years following registration as a prerequisite to enforcement (unless special circumstances excuse non-use).After three years, as noted above, all registrations are vulnerable to a non-use challenge.
    TIP:  Ultimately, use in Canada will be key to maintaining and enforcing rights in Canada. Local advisors can assist with strategies to ensure that Canadian use requirements are met.
  10. The Madrid Protocol offers opportunities for cost-savings and streamlined procedures but does not replace the benefits of local advice on clearance, filing strategies, enforcement and maintenance of rights.

    Some marks may be better suited for protection in Canada under the Madrid Protocol than others.Apparent savings in filings could be lost without the benefit of early advice on availability or strategies to avoid obstacles inherent in a mark or based on the rights of third parties.
  11. 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.

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.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions