Canada’s Intellectual Property Firm

Preparing filing instructions for Canadian agents — Am I missing anything?

When preparing instructions for a Canadian trademark agent to file a trademark application in Canada, practitioners invariably include all of the basic information such as an identification of the applicant, an identification of the trademark, and the goods and/or services to be listed in the application.

However, there is often additional information that should also be provided to the Canadian agent, which is either required, or could strengthen the application and the resulting registration.

This article summarizes the additional information we most frequently request from our clients upon receipt of instructions to file a trademark application in Canada. By providing this additional information in the filing instructions, the delay to filing can be minimized, and the application and resulting registration can potentially be strengthened.

  1. Use in Canada. Pursuant to Canadian law, if there has been use of the trademark by the applicant in Canada in association with any of the goods or services to be listed in the application, it is mandatory that the applicant indicate such use in the application. Failure to do so at the time of filing may result in an invalid application and possibly an invalid resulting registration.

What constitutes use of a trademark in Canada can be summarized briefly as follows:  

  • for goods, there is "use" if the goods have been received by a purchaser in Canada (any purchaser along the chain of distribution, including a wholesaler or distributor) and the trademark appears on the goods or on the packaging therefor; and
  • for services, there is "use" if the services have been available in Canada AND if the trademark has been displayed in advertising the services in Canada, or in performing the services in Canada.

Please note that there are other, less common circumstances that constitute use of a trademark under Canadian law, which we would be pleased to discuss upon request.

If the date of first use is difficult to determine, we can use language such as "used in Canada since at least as early as ________," and provide a date by which the applicant is certain that use had commenced in Canada. Different use dates can be provided for different goods or services.

If there has been no use of the trademark in Canada in association with some or all of the goods or services to be listed, the application can be based wholly or partly upon proposed use (intent-to-use) in association with those goods or services.

  1. Home application/registration and use. In Canada, it is possible to have two or more independent bases supporting an application and a resulting registration. Normally, the first basis is either prior use or proposed use in Canada, as discussed above. A potential additional basis is a home application or registration, in combination with use of the trademark anywhere.

Having two (or more) bases can have important advantages. For example, in an application where the first basis is proposed use in Canada, the application will be able to proceed through to registration without the need to file a Declaration of Use, if the application also includes a second basis (in such a case, the first basis would simply be deleted upon allowance of the application). Additionally, if an application or registration having two bases is challenged by a third party and one of the bases is proven to be incorrect in law or fact, the other basis will continue to support the application or registration, and the application or registration will remain valid and enforceable.

Thus, if there exists a home application or registration, and if there exists use of the mark by the applicant in any country in association with some or all of the goods or services to be listed in the Canadian application, it would be beneficial to provide this information to the Canadian agent. For this basis, it is not necessary to identify the date of first use, merely an identification of a country of use for each good and/or service for which such use exists. If this information is not readily available, the application can be filed without this basis and the basis may be added later if necessary. However, any additional basis must be inserted prior to advertisement of the Canadian application.

  1. Priority claim. Priority can be claimed if a first application for registration of the trademark was filed in a home country, and the Canadian application is filed within six months of that home country application. A home country is a Paris Union country in which the applicant has a "real and effective industrial or commercial establishment." Normally, this would require the ownership or operation of an office, factory, store, distribution center, or other physical establishment in that country; the presence of a licensee or a related company in the country will not suffice. A priority claim can be inserted after filing, so long as the amendment inserting the priority claim is filed during the priority period (i.e. within six months of the filing date of the home country application).

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.