A Practical Cross-Border Insight Into Trade Mark Work - Trademark

1 Relevant Authorities and Legislation

1.1 What is the relevant Canadian trade mark authority?

The Canadian Intellectual Property Office ("CIPO"), an agency of Industry Canada, is responsible for the administration and processing of intellectual property in Canada. The Office of the Registrar of Trademarks (the "Registrar") oversees the trademark process in Canada and is the governing authority on matters relating to trademarks.

1.2 What is the relevant Canadian trade mark legislation?

The Canadian Trade-marks Act, R.S.C. 1985, c. T-13, as amended is the relevant Canadian trademark legislation.

Bill C-31, a federal bill which will, among other things, implement significant changes to the Canadian trademarks regime, received Royal Assent on June 19, 2014. The date on which the Bill, Economic Action Plan 2014 Act, No. 1, will be proclaimed in force has not yet been announced, but it is likely that full implementation of the Bill will occur in late 2016 or 2017, when the regulations have been finalised.

On January 1, 2015, the border enforcement provisions of Canada's Combating Counterfeit Products Act ("CCPA") came into force.

There is no provincial legislation that specifically relates to trademarks, but provincial legislation does require the registration of business names. Registration of a trade name is different from registration of a trademark in that it is merely a recordal of the business name. It confers no statutory monopoly, unlike a trademark registration.

The Province of Quebec has a Charter of the French Language which applies to trademarks as it requires that every inscription on a product, its container or packaging, or on a document supplied with it, be in French. There is an exception to the mandatory use of French for "recognised" trademarks. This is generally considered to mean that the English version of a trademark may be used in the Province of Quebec if a trademark application has been filed or a registration has been obtained for the English version of the mark.

2 Application for a Trade Mark

2.1 What can be registered as a trade mark?

The following can be registered as a trademark: a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed from those manufactured, sold, leased, hired or performed by others; b) a certification mark; c) a distinguishing guise; or d) a proposed trademark. These can include word marks, design marks, sound marks, the shaping of goods or their containers or packaging.

When the amended Trademarks Act comes into force, the definition of trademarks will be expanded to include various non-traditional trademarks, including colour, three-dimensional shapes, holograms, scents, tastes, textures and more.

2.2 What cannot be registered as a trade mark?

The following cannot be registered as trademarks:

a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding 30 years;
a trademark that is, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
the name in any language of any of the goods or services in connection with which it is used or proposed to be used;
a mark that is confusing with a registered trademark or prior pending trademark application;
a mark that is the same or very similar to marks that are protected by sections 9 or 10 of the Trade-Marks Act (these include Royal Arms, Crests or Standards, flags, symbols of the Canadian armed forces, universities and "official marks" of Canadian public authorities, Olympic marks and marks that are scandalous, obscene or immoral);
protected geographical indications for wines and spirits; and
plant varieties protected under the Plant Breeders' Rights Act.

Marks that fall within categories a) or b) above may be registered if evidence can be filed to establish that the mark had acquired distinctiveness through use of the mark in Canada such that it was distinctive at the time the application was filed.

Alternatively, if the mark has been registered by the applicant in its country of origin, it may be registrable in Canada if it is not confusing with a registered trademark, is not without distinctive character, and it is not contrary to morality or public order or of such a nature as to deceive the public.

2.3 What information is needed to register a trade mark?

The following information is required in a trademark application:

the trademark; if it is a logo or design mark, an electronic copy of it is required;
the full name of the applicant and the address of its principal office or place of business;
details of any predecessor in title to the present owner of the trademark;
the date of first use of the trademark in Canada, if any;
priority claims;
colour claims;
if the application is based on foreign use and registration, details of the foreign registration or pending application; and
a description of the goods and/or services in association with which the mark is being used in Canada or is intended to be used.

The application is then submitted to the Canadian Trademarks Office along with the appropriate government filing fee.

2.4 What is the general procedure for trade mark registration?

Examination: after an application is filed, it is assigned to a Trademarks Office Examiner and is examined for compliance with formalities. Within six to eight months, the applicant will receive either an Examiner's report or an Approval Notice. An Examiner's report raises any issues or objections relating to the application. A response to the Examiner's report addressing the issues or objections raised by the Examiner must be filed within six months. If there are no issues or objections raised by the Examiner, the application will be approved for advertisement.

Approval for advertisement: when the application is approved, it is advertised in the Canadian Trademarks Journal. Third parties (such as other trademark owners) then have an opportunity to oppose the application within two months of its advertisement.

Allowance: if no opposition proceedings are initiated, or once all oppositions are overcome, the application will be allowed for registration. The Trademarks Office will issue a Notice of Allowance and request, in some instances, proof of use of the trademark in the form of a declaration of use, and payment of the registration fee.

Registration: following payment of the registration fee and filing of the declaration of use, as necessary, the application will register and the Trademarks Office will issue a Certificate of Registration for the trademark. Subject to continued use of the trademark, the registration will be valid for 15 years.

Maintenance and renewal: the initial trademark registration period is 15 years. However, to maintain a valid trademark registration, there must be continued use of the trademark. Upon the expiry of the initial registration period, a trademark registration can be renewed for consecutive 15-year periods indefinitely. Continued use will be required to maintain the validity of the registration. When the amended Trademarks Act comes into force, the trademark registration and renewal terms will be reduced to 10 years.

2.5 How can a trade mark be adequately graphically represented?

A formal drawing of the design should be in black and white and include a description of the colour(s) if colour is claimed as a feature of the mark. Drawings should be as large as possible, but should not exceed 22 cm x 35 cm (8.5 inches x 14 inches).

2.6 How are goods and services described?

The specific goods and services are to be described in ordinary commercial terms in the application. Currently Canada does not use the International Classification of goods and services, but it will do so when the amended Trademarks Act comes into force.

CIPO provides a Wares and Services Manual on its website at www.ic.gc.ca to provide guidance and on August 25, 2014, CIPO joined TMclass, an online tool that allows trademark applicants to verify whether a particular description is acceptable.

2.7 What territories (including dependents, colonies, etc.) are or can be covered by a Canadian trade mark?

Registration in Canada confers a monopoly on the trademark owner, which is the exclusive right to use the mark, as registered, throughout Canada and, conversely, the right to prevent others from using a confusingly similar mark.

2.8 Who can own a Canadian trade mark?

The applicant can be an individual, a company, a partnership, a trade union or any lawful association engaged in trade or business or the promotion thereof. The Registrar does not allow the applicant to be more than one individual, unless the individuals form a partnership or are engaged in a joint venture.

2.9 Can a trade mark acquire distinctive character through use?

Yes, a trademark can acquire distinctiveness through use. A trademark that is not registrable by reason of it being a name or surname, clearly descriptive or deceptively misdescriptive can be registered if it has been so used in Canada to have become distinctive at the date of filing the application.

2.10 How long on average does registration take?

On average, it takes 12 to 18 months to obtain a registration if no complicated Examiner's reports are issued and no opposition proceedings are initiated.

2.11 What is the average cost of obtaining a Canadian trade mark?

The average cost to obtain a Canadian trademark registration is Cdn$2,000 provided that no complicated Examiner's reports are issued and no opposition proceedings are initiated.

2.12 Is there more than one route to obtaining a registration in Canada?

No, there is only one Trademarks Register in Canada. There is no Supplemental Register and no Provincial Registers as in the United States.

2.13 Is a Power of Attorney needed?

No, it is not.

2.14 How is priority claimed?

A person who has filed a trademark application in his/her country of origin may claim the priority filing date of the first foreign application in his/her Canadian application, provided that the Canadian application is filed within six months of the first application and the country in which the first foreign application was filed is a member of the Paris Convention or the World Trade Organisation.

2.15 Does Canada recognise Collective or Certification marks?

Canada recognises Certification marks.

3 Absolute Grounds for Refusal

3.1 What are the absolute grounds for refusal of registration?

Registration can be refused on the basis of the following grounds:

the trademark is a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding 30 years;
the trademark is, whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive of the character or quality of the goods or services in association with which it is used or proposed to be used, or of the conditions of or the persons employed in their production or of their place of origin;
the trademark is the name in any language of any of the goods or services in connection with which it is used or proposed to be used;
the trademark consists of a protected geographical indication for wines and spirits; or
the trademark consists of plant varieties protected under the Plant Breeders' Rights Act.

3.2 What are the ways to overcome an absolute grounds objection?

Submissions may be filed with the Registrar asserting argument to overcome the objections raised by the Trademarks Office Examiner on the basis of the grounds for refusal set out above.

Marks that fall within the categories listed in question 2.2 a) or b) above (name or surname or clearly descriptive or deceptively misdescriptive) may be registered if evidence can be filed to establish that the mark had acquired distinctiveness through use of the mark in Canada such that it was distinctive at the time the application was filed.

3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

A decision of the Registrar may be appealed to the Federal Court of Canada within two months from the date on which notice of the decision of the Registrar is delivered.

3.4 What is the route of appeal?

A notice of appeal is filed with the Federal Court of Canada and served on the Registrar.

4 Relative Grounds for Refusal

4.1 What are the relative grounds for refusal of registration?

The relative grounds for refusal of registration are:

the trademark is confusing with a registered trademark, prior pending trademark application, or a trademark previously used or made known in Canada; and
the trademark is the same or very similar to marks that are protected by sections 9 or 10 of the Trade-Marks Act (these include Royal Arms, Crests or Standards, flags, symbols of the Canadian armed forces, universities and "official marks" of Canadian public authorities, and Olympic marks).

4.2 Are there ways to overcome a relative grounds objection?

Submissions may be filed with the Registrar asserting arguments to overcome the objections raised by the Trademarks Office Examiner on the basis of the grounds for refusal set out above. If the objections are raised in opposition proceedings, the applicant has an opportunity to respond by filing a counter statement, evidence and written submissions.

4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

A decision of the Registrar may be appealed to the Federal Court of Canada within two months from the date on which notice of the decision of the Registrar is delivered.

4.4 What is the route of appeal?

A notice of appeal is filed with the Federal Court of Canada and served on the Registrar.

5 Opposition

5.1 On what grounds can a trade mark be opposed?

The grounds of opposition include:

The application does not comply with the formal requirements of section 30 of the Trade-marks Act, such as the description of goods and services in ordinary commercial terms, the applicant did not use the trademark in Canada since the stated date of first use, the applicant did not use the mark in its country of origin when the application is based on foreign use and registration.
The trademark is not registrable on the basis of the absolute grounds set out above.
The trademark is not registrable on the basis of the relative grounds set out above.
The trademark is not distinctive.

5.2 Who can oppose the registration of a Canadian trade mark?

Any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.

5.3 What is the procedure for opposition?

Within two months after a trademark application is advertised in the Trademarks Journal, an opponent can initiate an opposition by filing a statement of opposition and the prescribed fee. The applicant can then file a counter statement. Both the opponent and the applicant are given an opportunity to file evidence, cross-examine affiants, file written submissions and appear at an oral hearing.

6 Registration

6.1 What happens when a trade mark is granted registration?

CIPO issues a certificate of registration when a trademark is granted registration.

6.2 From which date following application do an applicant's trade mark rights commence?

A trademark owner has rights in a trademark by virtue of its use of the mark in Canada. Those rights are limited in scope to the geographic area in which the trademark owner has so used a mark as to establish a reputation in association with it. Once a trademark is registered, the owner of the registration has the exclusive right to use the mark as registered across Canada.

6.3 What is the term of a trade mark?

The current term of a trademark registration is 15 years, but the amended Trademarks Act will reduce the term to 10 years.

6.4 How is a trade mark renewed?

A trademark registration is renewed by filing a renewal fee prior to the end of the term or within the subsequent six-month grace period. No proof of use is filed to renew the registration.

7 Registrable Transactions

7.1 Can an individual register the assignment of a trade mark?

CIPO will record an assignment upon request and payment of the $100 fee per mark. The assignment document must be filed with CIPO.

7.2 Are there different types of assignment?

The Trade-marks Act does not prescribe a specific form of assignment, so the terms of assignment can vary.

7.3 Can an individual register the licensing of a trade mark?

An individual can request that CIPO record a licence agreement relating to a trademark, but this is rarely done. Recordal of a licence agreement does not create rights. It merely gives notice of the licence agreement itself.

7.4 Are there different types of licence?

Yes. The Trade-marks Act does not contain any limitations relating to trademark licences other than it must be done with the authority of the trademark owner and the owner has, under the licence, direct or indirect control of the licensed goods or services.

7.5 Can a trade mark licensee sue for infringement?

The licence agreement often addresses this issue. If it does not, the licensee can ask the trademark owner to initiate infringement proceedings. If the owner does not do so within two months, the licensee can initiate proceedings in its own name.

7.6 Are quality control clauses necessary in a licence?

Yes. The licensor must have, under the licence, direct or indirect control of the licensed goods or services.

7.7 Can an individual register a security interest under a trade mark?

CIPO can be requested to record a security interest in a trademark by filing a copy of the security agreement and paying the prescribed fee. Recordal of a security interest does not create rights, nor does it perfect the security interest, but it does give notice of the existence of the security interest.

7.8 Are there different types of security interest?

Yes. The Trade-marks Act does not address the form of a security interest.

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Originally published in ICLG - The International Comparative Legal Guide to: Trade Marks 2015

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.

Canada: A Practical Cross-Border Insight Into Trade Mark Work