United States: Intellectual Property Legal News - October 16, 2013 • Volume 1, Number 5

Last Updated: October 21 2013
Article by Paul E. Bain, Christopher G. Graham and Peter C. Pang


By Paul E. Bain and Christopher G. Graham

The title says it all. Despite sharing a border, there are many differences between Canadian and United States trademark law that lawyers and trademark owners should be aware of. The most noticeable, though relatively unimportant, is the difference in terminology. While the United States denote their core concepts as "trademark" and "goods", Canadian legislators settled on the terms "trade-mark" and "wares". For ease of reference, this article will use "trademark" when referring to both systems.


While there are numerous dissimilarities between the two legal systems with respect to trademarks, the commonalities should be explored first. To begin with, both systems are a combination of statute and common law (regarding unregistered trademarks). The importance of priority in registration is also fundamental in both countries. Priority, which is incorporated in the first to file rule, accords primacy to earlier filed applications over subsequent applications, subject to challenges based on prior use.

As Canada and the United States are members of the Paris Convention for the Protection of Industrial Property, the effects of this treaty are shared by registrants in both jurisdictions. This means that domestic registrations by a Canadian or United States applicant can be followed by a filing in the other member jurisdiction within six months by the same applicant. The later application is deemed to have been filed on the same date as the original application. With some exceptions, Canada and the United States also share the requirement that a trademark be in use to maintain a registration. Failure to comply can result in loss of the trademark.

Main Differences

Despite these similarities, differences between the trademark laws of the two nations are significant. The spheres of jurisdictional competence are shaped differently between Canada and the United States. As a result, while trademarks in Canada are strictly the purview of the federal government and thus enforceable throughout the country, in the United States trademarks can be granted at either the state level or the federal level. Note that in order to register federally a trademark must be used or intended to be in used in interstate commerce.

The jurisdictions provide roughly the same bases of trademark registration: intent to use a trademark, prior use of a trademark and existing foreign registration of a trademark. Canadian applicants, however, also can register a trademark on the basis of "made known in Canada". Additionally, under the third ground for registration, Canadian law requires that a mark registered as an existing foreign registration be in use in the foreign jurisdiction rather than simply being registered in that location. There is no such limitation in the United States.

United States trademark law also differs from Canada in that goods and services are identified as belonging to various classes. United States applicants must therefore pay a separate filing fee for each class applied for. By contrast, as there is no such differentiation in Canada, a standard filing fee applies regardless as to how the good or service is characterized.

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks is another difference between the two jurisdictions as the United States is a member and Canada is not. This international agreement provides for streamlined foreign trademark registrations in member countries and, as a result, foreign registration for United States trademark applicants is cheaper and easier than it is f or their Canadian counterparts.

The dissimilarities extend to the realm of licensing. Subject to certain requirements, in the United States a trademark can be used by corporate parents or subsidiaries as of right (note that this does not include other forms of affiliated companies) without a licensing agreement. Canadian law requires a licence agreement between such entities as, absent such an agreement, the trademark holder runs the risk of failing to maintain use of the trademark. Though the agreement need not be written, a licence agreement should be reduced to writing and contain terms required by Canadian Trademark law such as the requisite level of control.

Evidence of use is not required for registration or renewal of a Canadian trademark. Conversely, United States trademark law requires the applicant or registrant to submit evidence of use at the time of registration, in the fifth year after registration of the trademark and at the time of renewal.

Procedural variations also exist. While trademark applications in both jurisdictions are subject to an opposition period in which the claim to a trademark in an application can be disputed, the length of time differs. In Canada, the opposition period lasts for two months following publication, while in the United States applicants need only wait thirty days following publication. The result of a successful application also varies between the two nations. In Canada, a trademark owner is awarded a trademark for a period of fifteen years before renewal is required. In the United States this period is only ten years.

Other Differences

There are many other differences between the two laws of the two countries. For instance, the United States allows filed trademark applications to be subsequently divided between intended use goods and prior use goods. This arises where one element of the application will be delayed. No similar ability exists in Canada.

In the United States trademark applicants can register certain marks that would not be capable of registration under the Principal Register, such as descriptive trademarks or surnames, on the Supplemental Register. This affords less protection but is completely unavailable to such trademarks in Canada.

In the United States failure to use the registered trademark symbol ® will prevent a trademark owner from collecting damages unless the infringer otherwise had notice of the registration. This is not the case in Canada.

Finally, there are minor peculiarities between the systems. Examples include, in Canada, the existence of a special class of trademarks that are reserved for the government and are known as official marks; and in the United States, a differentiation, in some cases, between "service mark" and "trademark" when referring to goods or services.

There are a multitude of difficulties that can be encountered by a trademark applicant or such applicant's legal counsel when attempting to register or maintain a trademark in the different North America jurisdictions. To combat this, trademark applicants should take care to retain counsel with knowledge of, and experience in, trademark law in both Canada and the United States. Dickinson Wright, though its offices on both sides of the Canada-United States border, has such capability.


By Peter C. Pang

The new Trademark Law was passed on August 30, 2013, to take effect on May 1, 2014, after nearly 10 years of revisions and several rounds of public comment. China's Standing Committee of the National People's Congress made a hearty attempt to outline ways to streamline trademark registration processing, afford greater protection for trademark owners and impose higher penalties as a way of deterring infringements.

The new law, which marks the third time the original Trademark Law first promulgated in 1982 has been amended (previous amendments 1993, 2001), has over 50 revisions, but the most significant changes are as follows:

  1. The new law raised the compensation ceiling for a trademark infringement to US$500,000, which is six times the previous limit. This is significant as it aims to deter infringement by imposing heavy sanctions and sends a message to the world that China will not tolerate infringement of other brand owner's trademark rights. Furthermore, in cases where the violators have acted in "bad faith", treble damages are available, bringing the total maximum penalty to over US$1.5 million.
  2. The new law inserted a provision that states trademark agencies and attorneys are not permitted to register trademarks on behalf of their clients if they know or should have known that their client is registering trademarks maliciously in total disregard of the rights of others or by doing so, is knowingly infringing on the trademark rights of others. Agencies violating this provision will face administrative fines and given a bad credit report which will be filed with industrial and commercial authorities limiting such agencies' ability to appear before the China Trademark Office. In cases where the offense is considered serious, the agency that violated the law could have their businesses license suspended for a period of time or possibly revoked.
  3. The new law also offers protection for renowned trademarks, giving owners the right to ban others from registering their trademarks or using similar designations. However, renowned trademark owners are prohibited from using their renowned status in advertising or promotion, thereby precluding owners from unjustly enriching their recognition. Imposing a fine of up to US$16,500 for violation of this provision is also written into law.
  4. The law also changed provisions regarding the examination period of trademark related applications to streamline processing, such as filing, opposition, invalidation and revocation. For the first time, a multi-class application system will be put into place to speed up registration. Registration submissions now have preliminary approval deadlines of nine months from date of filing. Once this preliminary approval has been granted, oppositions can be filed for up to three months after the preliminary approval has been published in the official gazette. Opposition proceedings must then be completed within a year. Any possible invalidation proceedings must now be completed within nine months from the request date and can only be requested by prior right holders. With this new law, nearly all trademark reviews will be completed within 12 months as opposed to the timeline under the old law of nearly 30 months. This is a vast improvement of the system and will encourage more applications and instill greater confidence in foreign trademark owners of the new Chinese trademark system.
  5. The new law grants greater authority and power to the courts to seek books and records of the infringer for purposes of determining compensation. A court order can be issued to the alleged infringer (once liability is determined), and if the infringer refuses to provide his books or provides misleading information, then the court may penalize the infringer by rejecting the evidence and determine the compensation based on the claims of the right holder. This change in the law should engender greater incentive to be open and forthright with respect to the production of books and records, as well as reduce court backups and litigation costs.

The amendments to the Trademark Law is generally viewed as positive and a right step towards bringing China's antiquated trademark system into international standards. While still far from perfect, the new law enhances and clarifies many provisions and how the new provisions will be applied in practice remains to be seen. With over 8.17 million registered trademarks (and counting), China is home to the world's largest number of registrations and with this, carries a daunting responsibility to administrate this massive registration system in a fairer and more efficient manner. Resources devoted to upgrading the law is a welcome first move, but more needs to be done on the implementation and enforcement level to increase trademark owner's confidence in the Chinese system. Only when enforcement is accompanied hand in hand by upgrades to the law will China truly be a place where businesses can be assured of first class trademark protection.

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.

Paul E. Bain
Christopher G. Graham
Similar Articles
Relevancy Powered by MondaqAI
Smith Gambrell & Russell LLP
Stites & Harbison PLLC
Frankfurt Kurnit Klein & Selz
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Smith Gambrell & Russell LLP
Stites & Harbison PLLC
Frankfurt Kurnit Klein & Selz
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must 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.


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