Answer ... The Canadian Intellectual Property Office (CIPO), a special government body responsible for the administration of copyright, patent and trademark rights in Canada, and which includes the Office of the Registrar of Trademarks, has control over registration procedures.
Answer ... For electronic applications, CIPO charges a filing fee of C$330 for each application for the first class of goods or services to which the application relates. Paper applications are C$430 for the first class. CIPO charges an additional C$100 for each additional class of goods or services to which the application relates, in both instances.
Answer ... Goods and services must be grouped according to the Nice Classification scheme for purposes of filing an application or renewing a registration in Canada.
Answer ... ‘Class-wide’ applications are not allowed, and each applicant must identify specific goods and services in commercially ordinary terms. CIPO has published a manual of acceptable goods and services; it is accessible online via www.ic.gc.ca/app/scr/ic/cgs/ext/home.html. Notably, the list of descriptions in the manual is not exhaustive
Answer ... Yes. In its application, an applicant is not required to include a statement that it (whether by itself and/or through a licensee) intends to use the trademark in Canada, or that the applicant is satisfied that it is entitled to use the trademark in Canada in association with the goods or services described in the application. However, by filing an application, the applicant is deemed to have already used the mark in Canada or to have an intention to do so.
An application for registration can be opposed on the basis that, as of the filing date of the application, the applicant was not using and did not intend to use the trademark in Canada in association with the goods and services specified in the application.
Answer ... Yes, CIPO conducts a search of the Trademarks Register for prior-filed applications and registrations as well as ‘prohibited marks’ (ie, marks afforded special protection under the Trademarks Act, as discussed in question 2.1), and performs a relative examination.
An application will be refused registration if it is found to be identical or confusingly similar to any mark or marks that are the subject of a prior application or registration. Prohibited marks are generally held to a different standard of similarity, meaning that an applied-for mark could also be refused if it were “consisting of, or so nearly resembling as to be likely to be mistaken for” a prohibited mark, regardless of other confusion factors considered in connection with other marks.
Answer ... CIPO also performs examination on absolute grounds, which are discussed further below in response to question 3.8.
Answer ... Yes, trademarks are also ineligible for registration if they are or consist of any of the following:
- primarily merely the name or surname of an individual who is living or has died within the preceding 30 years;
- matter which consists of, or so nearly resembles as to be likely to be mistaken for, a prohibited mark, including royal arms, crests, standards, flags, ‘official marks’ of public authorities and universities, matter suggesting a false connection to actual individuals and insignia of various organisations;
- scandalous, obscene or immoral matter;
- denominations that are protected as plant variety names;
- geographical indications identifying a wine, spirit, agricultural product or food; and
- terms protected under the Olympic and Paralympic Marks Act.
With respect to refusal on grounds of descriptiveness, trademarks may be denied protection if they mislead the public as to:
- the character, quality, quantity or composition of the goods or services;
- the geographical origin of the goods or services; or
- the conditions of, or persons employed in, the production of the goods or the performance of the services.
For purposes of assessing descriptiveness of an applied-for mark and confusion between marks, English and French terms are considered to be equal. Further, a mark may be refused registration if it is the name in any language of any goods and services in connection with which it is used or intended to be used.
Examiners may also refuse registration of any trademark on the grounds that it is not distinctive, in that the trademark is not capable of distinguishing the source of goods or services, either because it is commonly used in the industry or because it is inherently incapable of acting as an identifier of source (eg, the name of a colour for goods that are ordinarily that colour or a trademark that simply provides generic information, such as ‘Contents are hot’).
Answer ... No. However, refusals based on names or surnames, descriptiveness or lack of distinctiveness may be overcome where the applicant can demonstrate that its mark has been used across Canada (typically in all provinces and territories) and has acquired distinctiveness as a result thereof, all as of the filing date of the application.
Answer ... Yes, a third party may submit a notice of third-party rights to CIPO, prior to advertisement, but only on the following grounds:
- confusion with a registered trademark;
- lack of entitlement (eg, due to the third party’s prior use of an unregistered trademark or ownership of a co-pending confusing application); or
- where the application uses a registered trademark to describe its goods or services.
The registrar will place such notifications of third-party rights on the applicant’s file, but will not provide any information to the third party about any action taken as a result of the notification.
Answer ... No. A trademark may be registered in Canada even if the mark is not used in Canada or anywhere else.
Pending amendments to the Trademarks Act will bar claims based on causes of action available for registered trademarks for the first three years of registration, unless such registered trademarks are in use in Canada or special circumstances exist that excuse the absence of use. After the first three years of registration, registered trademarks become vulnerable to summary cancellation proceedings based on non-use.
Answer ... It currently takes about 12 to 14 months for the first office action to issue. If any objections are raised, the applicant will have six months to respond. In addition, a six-month extension is available as of right, with further six-month extensions available in certain circumstances.
Answer ... In those rare cases where no examiner’s reports are issued, an application can proceed to publication in about 12 months.
On average, however, most applications receive examiner’s reports, which often entail several months for response and further review by CIPO. Accordingly, in most cases, it will take at least 28 months from the time an application is filed to publication (assuming that all of the examiner’s objections can be overcome).