This article highlights important aspects of Canadian trademark practice and the benefits of owning a Canadian trademark registration.
Considerations for pre- and post-filing
Filing bases and use requirements
In Canada, applicants do not need to specify any filing bases in their applications and, with the exception of certain “non-traditional” marks, do not need to show that a trademark is in use in Canada (e.g., by filing a Declaration of Use) in order for the application to issue to registration. For certain “non-traditional” marks, such as the three-dimensional shape of a product or a mode of packaging the product, applicants are required to establish “acquired distinctiveness” through trademark use as a pre-requisite to registration. Once registered, there is no use requirement in Canada for maintaining or renewing the registration, unless it is the subject of a non-use cancellation proceeding.
The lack of a use requirement, along with Canada joining the Madrid Protocol, has led to an increase in the number of applications filed in or designating Canada with a corresponding increase in the number of opposition and non-use cancellation proceedings initiated as a result. The crowded state of the trademarks register highlights the importance of conducting clearance searches prior to filing in Canada.
Consent and disclaimers
Consent agreements are treated with a high degree of skepticism by the Canadian Trademarks Office and are generally insufficient to overcome confusion objections. Likewise, disclaimers cannot be relied upon to overcome objections that may be raised by the Trademarks Office. While it remains possible to voluntarily enter a disclaimer to all or part of a trademark, the Trademarks Office stopped insisting on disclaimers in certain cases several years ago.
Examination
Canadian trademarks Examiners are not licensed attorneys and do not have any legal training. They frequently raise substantive and technical objections. Descriptiveness and distinctiveness objections are being raised more frequently in addition to confusion objections. Minor technical objections should also be expected if goods and services are expressed in terms not found in CIPO’s Goods + Services Manual.
Official marks
Official marks are marks adopted and used in Canada by “public authorities”. They are protected under section 9 of the Trademarks Act. Official marks are granted a much broader scope of protection than regular marks in Canada. An official mark is not examined, other than to confirm that the owner is a public authority that has in fact adopted and used the mark in Canada. Once published, an official mark prevents the adoption (i.e., use and registration) of the same or a very similar mark by a third party. Furthermore, official marks are not subject to renewal. If an official mark is cited against a trademark application in Canada, the applicant may file either written arguments to overcome the objection or the written consent to use and register the mark from the relevant public authority. Many public authorities are cooperative; however, some insist on a donation, or nominal fee, in exchange for their consents, which can add costs and delays to registration. For more information on official marks, check out our article, “Official marks in Canada: a unique system with notable flaws”.
Benefits of owning a trademark registration in Canada
CBSA’s Request for Assistance
Trademark owners can take advantage of the Canada Border Services Agency (CBSA) Intellectual Property Rights Program to help combat counterfeiting. Once a trademark is registered, it may be recorded with the CBSA by way of a “Request for Assistance”. The CBSA will monitor inbound, outbound, and in-transit commercial shipments for suspected counterfeit goods and will let the trademark owner know if it encounters any suspected counterfeit goods bearing the mark. The trademark owner may then take legal action against the importer and exporter.
.CA domain name
Entities seeking to obtain a .ca domain name must meet the Canadian Internet Registration Authority (CIRA) Canadian Presence Requirements. If a brand owner is not incorporated in Canada, it may nevertheless meet the requirements if it owns a Canadian trademark registration. The brand owner may then register a .ca domain name consisting of or including the registered trademark. Securing a .ca domain name is an important part of a robust IP strategy in Canada and should be considered early in the branding process.
French language laws
Product labelling, public signage, and advertising in the Province of Québec are subject to specific language requirements under the Charter of the French language. Broadly speaking, the general rule is that any inscription on a product, on public signage or in commercial advertising and publications must be in French. An exception exists for “recognized trademarks”. Such marks may appear exclusively in a language other than French, provided that no French version of the trademark has been registered in Canada. For more information on French language requirements in the Province of Québec, check out our article, “Québec’s French language requirements for commerce and business: reform of the Charter of the French language”.
Benefits to registration
While the process of securing trademark protection in Canada can be challenging, the Trademarks Act grants registered trademark owners exclusive statutory rights throughout Canada, rights that serve as both a sword and a shield. On the one hand, it is generally easier (and less costly) to claim trademark infringement (based on registered rights) than to claim passing off (based on local goodwill and damages). On the other hand, a trademark registration also provides its owner with a complete defence to allegations of both trademark infringement and passing off.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.