Canada’s Intellectual Property Firm

10 things you need to know when filing, prosecuting and maintaining trademark applications in Canada

Authored byKohji Suzuki

As a leader of the G-8 in economic growth and the largest trading partner of the United States, Canada has become an increasingly important market for many companies, and therefore an important country in which to secure trademark protection. When filing, prosecuting and maintaining a trademark application in Canada, there are several aspects of law and practice that are unusual and that are important to bear in mind. The following outlines a few of the most important of these features:

  1. No classes. Canada does not use a classification system for goods and services for the purpose of the specification in an application Therefore, an unlimited range and number of goods and services can be included in a single Canadian application without any increase in the government fee.
  2. Existing use in Canada. If a trademark has been used in Canada, an application for registration of that trademark in Canada must indicate such prior use. Failure to do so in the application at the time of filing can be a successful ground of opposition, or a basis for invalidation of a resulting registration. Unlike in the U.S., an application filed on the basis of "proposed use" (which is the Canadian equivalent to the U.S. intent-to-use claim) cannot later be corrected to be based on prior use.
  3. First use date. Where a trademark has been used in Canada, it is important not to claim a date of first use that is too early (i.e. before the actual date of first use) since this could again result in vulnerability to opposition or invalidation. Since it is often difficult to amend the date of first use after filing, it is important to include the correct information at the time of filing when possible. The use of the language "at least as early as…," is acceptable and is often used when the precise date of first use is unknown.
  4. Multiple bases. A Canadian application and resulting registration can be founded on more than one basis for filing. As each of these bases is treated independently, reliance on multiple bases can lead to a more robust registration. For example, a Canadian registration based on (i) use in Canada, and (ii) home registration, will remain valid and enforceable, even if one of these two bases is found by a court to be incorrect in fact or law.
  5. Home registration basis. Unlike under U.S. section 44(e), a Canadian application filed by a foreign applicant cannot be based on the applicant's home application or registration unless the trademark has been used. This use does not need to have been in Canada or in the applicant’s home country; use in any country will suffice. A date of first use need not be provided for a home application/registration basis (unlike for a prior-use-in-Canada basis).
  6. Prosecution times. Prosecution times have improved considerably. Only a few years ago, the delay from filing of an application to consideration of that application by an examiner could be up to 18 months, and consideration by an examiner of a response to an office action could be up to 24 months. The average delay for consideration by an examiner of either an application or a response is now approximately four months.
  7. Extensions of time for responding to an Office Action. In the past, it was relatively easy to obtain many extensions of time for responding to an Office Action. As of the spring of 2010, it is now only possible to obtain only a single six-month extension of the original six-month deadline. Additional extensions are only available on the basis of exceptional circumstances. Exceptional circumstances are generally limited to situations outside the control of the applicant, and may include an ongoing expungement proceeding in respect of a cited registration, awaiting registration of a home application (in the case of an application based on home registration) and illness or death of an individual closely involved in the handling of the application.
  8. Accurate Declarations of Use. A recent court decision in an invalidation proceeding has highlighted the importance of ensuring that all goods and services listed in a Declaration of Use filed in support of a proposed use application, have in fact been used by the applicant in Canada.
  9. Simple renewal procedure. A trademark registration in Canada only needs to be renewed once every 15 years. Further, unless a registration is attacked, it is never necessary to prove use or provide specimens of use.
  10. Madrid Protocol / Singapore Treaty. While adoption by Canada of the Madrid Protocol and Singapore Treaty is under discussion, Canada is not yet a member of either regime. As such, registration in Canada can only be obtained through the filing of a Canadian application. It is not expected that either the Madrid Protocol or the Singapore Treaty will be adopted within the next three years.