With strong economic ties and more favorable conditions concerning the trading relationship, the United States and Canada have been in a very fruitful relationship. Both countries remain a hub for major businesses and trading partners. With increasing trade, it becomes imperative to understand the law in both countries and the difference that might arise within. This piece will talk about the trademark law of both countries in terms of the differences that arise. Understanding this difference can be very beneficial for the companies which are into the business in both the countries. Few similarities can be noted in terms of amendments being made in 2019 to the Canadian trademark legislation. This amendment tries to get closer to the US. As regarding the NICE classification and Madrid Protocol, Canada starts using the same after the 2019 amendment. Nevertheless, a few similarities and differences which can be ascertained are mentioned below.
Non-distinctive marks
The use of the mark is an important factor for the mark to be registered as the trademark unless it is a foreign application. After the 2019 amendment to Canada trademark law, use is no longer required to obtain the registration. There is no need to show any such assertion regarding the use of the mark. Nevertheless, when the applicant ascertains its priority right, the use becomes an important part of that. The concept of Principal and Supplemental Register is followed in the US. The supplemental register contains those marks that are given limited protection since they are surname, descriptive, or non-distinctive, still, they can be the indicator of source. But Canada doesn't have the concept of two registers and they have only one which is the principal one. Therefore, it means that unlike the case in the US, no such mark can be registered which are non-distinctive. An inherently non-distinctive mark cannot be registered until it has acquired a certain level of distinctiveness (or "secondary meaning") through extensive use in Canada. Therefore, it will be a challenge for the applicant to register an inherently weak mark.
In case there are any confusion objections, the US accepts the consent letter from the owner which consents to the use and registration of the mark. As compared to the US, where such consent can add to the removal of the objections, less weight is given in Canada based on the reason that it might confuse the consumer. Despite any consent letter, if the office concludes that the risk of confusion is there, then it will not be registered.
Protection and opposition
In the US, the mark can be registered in Federal or State-specific. If the mark is used interstate, and then it can be federally registered, which provides more protection. As compared to state registration, they are cheaper and quicker but they provide protection only in the state. Unlike the case in Canada, the protection here is nationwide without any condition of interstate trade. The proceeding of opposition in Canada is less complex and cheaper as compared to the United States. Talking about the registered trademark rights, Canada provides it for an indefinite period if renewed after 10 years. The situation is not similar in the US where the owner must show the specimen of use between five and six-year along with the renewal after every ten years. The renewal is also a simple process were just paying the renewal fees will be sufficient without any proof of use.
In terms of litigation procedures, Canada has not divided the court structure in terms of the subject area. Only one Federal Court works, unlike the US where we have all the district and circuit courts. This difference is much probable while dealing with cases involving subject matter experts. Therefore, in case of any dispute the rules in Canada state that the brand owner should commence the proceeding at the Federal court by way of action so that the decision must be determined quickly. Moreover, in Canada, a successful litigant may recover a portion of incurred legal fees (typically 25-40%), together with all reasonable disbursements (such as expert fees, survey fees, etc.).
Both countries have almost similar rules with a slight difference as mentioned above. The applicant should be clear with the similarities and differences that arise in both jurisdictions.
Title- TM filing in Canada and US
Description- the US and Canada is a major hub for business and Multinational Corporation. This piece will analyze the difference in the TM law in both countries.
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