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A trademark is a symbol (such as a word, logo, slogan, name, sound, hologram, moving image, three-dimensional shape of goods, etc., or any combination thereof) adopted and used by a manufacturer or merchant to distinguish its goods and services from those of others.
Registration and Related Issues
A trademark can only be considered registered if it has been entered as registered into the federal Trademarks Register; there are no provincial trademark registers. Registration provides a trademark owner with the exclusive right to use the registered trademark throughout Canada, in association with the goods and services for which it is registered, and prevents others from using marks that are confusingly similar. Registrations are valid for a period of ten years and are renewable indefinitely upon payment of the applicable administrative fees. There is currently no requirement to show use of the trademark at the time of renewal.
Although the use, advertising, or promotion of a trademark in a particular geographical area can establish rights in and to the trademark under common law for that specific area, securing a trademark registration is always the preferred method of protection.
The main benefit to registration is the protection afforded to the owner of the trademark across every province and territory in Canada, while unregistered trademarks have protection limited to the territory of use.
In certain jurisdictions such as in China, the right to register a trademark lies with the first to file a trademark application. However, in Canada, the rights to use and exclude others are based on who used it first, which is not necessarily the person who filed first. This is an important distinction between the trademark system in Canada and in China. Therefore, when seeking trademark protection in Canada, we recommend conducting prior trademark availability searches on the Canadian trademarks register and at common law. Once a trademark is registered, it should be noted that five years after a registration is issued, it becomes incontestable on the basis of prior common law rights unless it is demonstrated that the application was filed with the knowledge of such prior rights.
There is no requirement that a trademark be used prior to the issuance of a certificate of registration.
In addition, registration provides a legal presumption of ownership. As a result, in the case of a challenge to the ownership of a trademark, the onus to prove ownership rests on the challenger, not on the registered party.
A registration may be cancelled in whole or in part by way of an administrative proceeding if there has been no use of the trademark (in association with the goods and services set out in the registration) for a period of three years unless special circumstances justifying non-use can be shown.
International Considerations
On June 17, 2019, Canada joined the Madrid Protocol and changes were made to the Trademarks Act. The Madrid Protocol offers the possibility for trademark owners to file a single application for international registration with the World Intellectual Property Organization (WIPO) and subsequently designate the member countries where protection is requested. Each member country then applies its own laws to determine whether a trademark is registrable in its territory. An application for registration filed under the Madrid Protocol does not provide an international protection for a trademark but facilitates the registration process of that trademark in several jurisdictions.
An applicant may avail itself of the Paris Convention such that the priority date will be the date of first filing(s) abroad provided filing in Canada occurs within the deadline of 6 months from the first application. Do note that there is a 7 day grace period in Canada. An applicant may obtain trademark protection in Canada either by filing nationally or by availing itself of the Madrid Protocol.
Although a foreign party may register a trademark in Canada without designating a Canadian trademark agent, it is highly recommended to, at least, consult a local trademark agent to avoid unnecessary surprises along the way and to obtain an opinion on whether the trademark is available for use and registration or is registrable in accordance with the Canadian Trademarks Act.
We always recommend that the applicant performs an availability search prior to filing any application for registration, whether it is a national filing or one filed via the Madrid Protocol. It allows the applicant to check the availability of the trademark in Canada. Please note that, in Canada, the test for confusion is applied in French and English, which means that a mark in English could be objected by the examiner citing a mark in French although both marks are different in sound and in appearance.
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.
