Comparative Guides
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Results: 4 Answers
Trademarks
8.
Maintenance and removal of registrations
8.1
What is the length of the initial term of registration and what is the length of renewal terms?
 
Canada
The initial term and renewal term are each 10 years.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
8.2
What, if anything, must be submitted to the trademark office to maintain or renew a registration?
 
Canada
To renew a registration, a fee must be paid in the six months before expiration of the initial term or renewal term and the later of:

  • the end of the six-month period after the end of the initial period or the renewal period; and
  • the end of the two-month period that begins after the date of the registrar’s renewal notice.

Owners must also group goods and services according to the Nice Classification System before the Canadian Intellectual Property Office (CIPO) will process a renewal, in the event this has not previously been done.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
8.3
What are the grounds for cancelling a trademark registration?
 
Canada
In Federal Court, the validity of a registration may be challenged on the following grounds:

  • The mark was not registrable at the date of registration;
  • The mark is not distinctive at the time of proceedings;
  • The mark has been abandoned;
  • The applicant was not the person entitled to secure the registration; or
  • The application for registration was filed in bad faith.

Additionally, through summary expungement proceedings before CIPO, a registration is liable to be expunged or amended to have goods or services not in use struck from the registration if the mark has not been used in Canada within the prior three years in association with the goods or services covered by the registration.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
8.4
Under what circumstances may the trademark office cancel a registration on its own initiative?
 
Canada
Although historically rare in practice, the registrar is statutorily empowered to require, at any time, the registered owner of a trademark to furnish evidence of use of that mark in Canada within the prior three years in association with the goods or services covered by the registration, upon provision of three months’ written notice.

The registrar is expected to commence a pilot project seeking evidence of use from owners of registered trademarks. The registrar will target two groups of registrations for this initiative: those registered a threshold number of years ago and those exceeding a threshold number of Nice classes. Details are as yet unavailable.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
8.5
What is the procedure by which a third party may seek cancellation of a trademark registration?
 
Canada
To seek cancellation of a registered mark on one of the grounds listed in question 8.3, a claimant must commence a proceeding in the Federal Court of Canada.

In contrast, to initiate a summary expungement proceeding before CIPO, any person that makes a written request and pays the prescribed fee can ask the registrar to demand that a registered trademark owner furnish evidence of use of its mark in Canada in association with the goods or services covered by the registration. If insufficient or no evidence is provided to confirm that the mark was used in Canada at any time during the three-year period immediately preceding the request, and the owner is unable to explain special circumstances excusing non-use, then the registration will be expunged from the register, in whole or in part, in whole or in part.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
8.6
What is the procedure for appealing a decision cancelling a registration?
 
Canada
To appeal decisions against cancellation proceedings in court or summary expungement proceedings before CIPO, the trademark owner or the party seeking cancellation may appeal the final decision of the registrar to Federal Court within two months of the date on which notice of the decision was dispatched by the registrar.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP