Answer ... Trademark rights in Canada find roots both in the federal Trademarks Act and as the common law. Trademark rights are regulated by the act, as well as related competition and criminal legislation.
While provincial laws and courts also impact on trademark rights, there is no separate system of provincial protection for trademarks in Canada.
Trademarks existing in Newfoundland before 1 April 1949 are governed according to the separate provincial laws of Newfoundland, which are not discussed here due to their limited application.
Answer ... Trademark rights arise through one of the following ways:
- without registration, through use of a trademark in the normal course of trade in any part of Canada in connection with specific goods or services; and
- through federal registration of a trademark in Canada, regardless of whether the mark has been used in Canada or abroad.
Under the second route above, a registration will provide exclusive protection for that trademark across all of Canada, even if the trademark has been used in one part of Canada only. Conversely, use without registration will provide protection only across the specific territory where the trademark has accrued a reputation and goodwill. Pending legislation will require a registered owner to prove use of a registered mark in Canada during the first three years following registration, in order for such owner to sue a third party for infringement of such mark during that three-year period. However, that law is not yet in force.
Answer ... The source of the trademark registration scheme is the Trademarks Act and the Trademarks Regulations made under the act. The Trademarks Regulations also implement the Madrid Agreement Concerning the International Registration of Marks, allowing owners of international registrations to request extensions of protection into Canada.