Canada: Prosecution Of Trademark Applications Post June 17: A Distinctive Affair

Last Updated: July 2 2019
Article by Meghan Dillon

The changes to Canadian trademark law and practice that come into force June 17 will significantly impact the prosecution of Canadian trademark applications.

Applications will still be examined on substantive, relative and technical grounds, but there will be many additional considerations as well, with distinctiveness given much more prominence in examination under the post June 17 Trade-marks Act.

Inherent distinctiveness

All applications will be examined for inherent distinctiveness, including any application that had not yet been advertised as of June 17.

Where “the Registrar’s preliminary view is that the trademark is not inherently distinctive,” an objection will be raised, either to the mark as it applies to all, or just a subset, of the goods and services.

If the applicant is not able to overcome the objection through argument, they will have to file affidavit evidence, showing that the mark is distinctive as of the filing date of the application.

It is not clear exactly what evidence will be required to establish that a mark is distinctive, but it may including one or more of the following, namely that the mark:

  • is inherently distinctiveness (not common to the trade, refers to only one source, and would be perceived as a trademark);
  • has a reputation in Canada through use elsewhere with spillover advertising into Canada; and
  • has been used and advertised in Canada.

The resulting registration will be territorially restricted to those regions in Canada where the trademark has been shown to be distinctive.This ground seems to conflate inherent distinctiveness and acquired distinctiveness, and will make it more difficult to register trademarks that have been traditionally registrable without the demonstration of acquired distinctiveness.

Non-traditional marks

A number of new non-traditional marks will be registrable, such as scents, tastes and textures, in addition to those that are already registrable, including sounds, holograms, three-dimensional shaping of goods and mode of packaging (the latter two are essentially what are known as distinguishing guises under the current Act).

Again, to obtain registration of one of these non-traditional marks, applicants will be required to furnish evidence of distinctiveness as of the application filing date. This has always been the case for distinguishing guises, but for other types of non-traditional marks, such as sounds, evidence of distinctiveness has not traditionally been required.

There are strict guidelines as to how non-traditional marks are to be represented and/or described in an application. As applicants, agents and examiners get used to these specific technical requirements, there is bound to be a surge in technical objections.

Section 12(3) 

Following June 17, where an application is objected to on the basis that the mark is primarily merely a name or surname or that it is clearly descriptive, and the applicant is unable to overcome the objection through argument, the trademark may still be registrable “if it is distinctive at the filing date … having regard to all the circumstances of the case including the length of time during which it has been used” (s. 12(3) of the Act). The applicant must furnish evidence showing that the mark is distinctive as of the filing date.

Section 12(3) replaces current s. 12(2), with one important distinction. The current section requires evidence of “use in Canada” such that the mark has “become distinctive” at the filing date, whereas new s. 12(3) does not refer to “use in Canada.” This suggests that use outside of Canada may also be persuasive.

The Registrar still has the ability to restrict the registration to the “defined territorial area in Canada” where the trademark is shown to be distinctive, so certainly the traditional s. 12(2) evidence of extensive sales and advertising, broken down by province, would still be ideal.

Foreign applicants will no longer be able to overcome registrability objections by relying on their home country registrations, use abroad and demonstration that the mark is “not without distinctive character” in Canada with the removal of s. 14 from the Act. It will be necessary for everyone facing a name/surname or descriptiveness objection that cannot be overcome through argument to show that their mark is distinctive as of the filing date.

However, because s. 12(3) does not specifically refer to “use in Canada”, it may permit the type of evidence traditionally associated with s. 14, namely use in another country with spillover advertising in Canada.

Utilitarian function

A trademark will not be registrable if its features are dictated primarily by a utilitarian function.

Utilitarian function is currently covered under the provisions of the Act dealing with “distinguishing guises,” but those provisions will be gone as of June 17, and this “new” examination criteria will be applicable to all marks.


After June 17, classification will be mandatory and any applications that have not yet been advertised will have to be amended to classify the goods and services.

Goods and services will still have to be described “in ordinary commercial terms” and in a manner that identifies a specific good or service, but they will also have to be grouped according to Nice class, preceded by the class number, and presented in numerical order by class.

The best way to avoid classification objections is to pick from the list of acceptable terms in CIPO’s Goods and Services Manual, which also lists the applicable classes.

If there is a dispute over classification, the Registrar’s determination prevails and is not subject to appeal.

Notification of third-party rights

Finally, it is not only examiners who will be applying new grounds and criteria during examination. Following June 17, the Trademarks Office will accept third-party correspondence in connection with pending applications on three specified grounds:

  • confusion with a registered trademark;
  • entitlement (confusion with a co-pending application); and
  • registered trademark used in the description of goods/services.

Currently, third parties have to wait until the application is advertised for opposition to raise their concerns. The Trademarks Office will not consider prior use of a confusingly similar mark, only information related to the enumerated grounds and a list of the relevant registrations or pending applications.

The sender will not be notified as to whether any action was taken as a result of the notification. It is up to the sender to continue to monitor the application so they can oppose, if the mark is eventually advertised.

Originally Published in The Lawyer's Daily.

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

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

Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
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 (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

To Use 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.


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.


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