Canada’s Intellectual Property Firm

Top 10 differences between Canadian and U.S. trademark filing, prosecution and enforcement

Authored byTierney GB Deluzio and Kohji Suzuki

Canada has established itself as an attractive jurisdiction in which to do business. It has a stable economy, a high-income population, a business-friendly environment and has long led the G7 in growth. It also has especially strong economic ties and an extensive trading relationship with its larger neighbor, the United States, as a result of which many view the two countries as sharing similar laws, including trademark laws.

Indeed, Canadian trademark laws and rules do bear many similarities to those in the United States. Notably, the 2019 amendments to Canadian trademark legislation brought Canadian practice considerably closer to the United States; for example, Canada now uses the Madrid Protocol and Nice Classification systems and allows divided applications. However, for international brand owners looking to file, prosecute, and enforce trademarks in Canada, it is critical to keep in mind some important features unique to the Canadian system, which are outlined below.

1. No filing basis

Historically, it was necessary to identify a filing basis for Canadian trademark applications, as is currently the case in the United States.

Since Canadian trademark legislation was amended on June 17, 2019, a filing basis is no longer required in Canada, bringing Canadian filing requirements closer to those of many other countries but further from those of the U.S.

2. Use not necessary for registration

In the United States, use is a prerequisite to securing a trademark registration, unless the application is based on a foreign registration.

In Canada, as a result of the 2019 amendments to the Trademarks Act, use is no longer required to obtain a registration. All applications can proceed to registration once the opposition period has expired, without the need to assert use or file a Declaration of Use. However, use remains an important element of Canadian trademark law, including when assessing priority of rights, in opposition and cancellation proceedings, and in enforcement.

3. No Supplemental Register

The United States has both a Principal and a Supplemental Register. The Supplemental Register provides limited protection to marks that are unregistrable by virtue of being a surname, descriptive, or otherwise non-inherently distinctive but that are in use and may, over time, become an indicator of source.

In contrast, Canada has only a single Register, the equivalent of the U.S. Principal Register. An inherently non-distinctive mark cannot be registered until it has acquired a certain level of distinctiveness (or “secondary meaning”) through extensive use in Canada. The absence of an equivalent to the Supplemental Register is particularly relevant now that Examiners can reject an application on the basis that the mark lacks inherent distinctiveness. While Canadian Examiners could always raise name and descriptiveness objections, this new ground of objection, available since June 17, 2019, has made it more challenging to register inherently weak marks.

4. No required disclaimers

Historically, the Canadian Trademarks Office routinely required applicants to disclaim the right to exclusive use of any portion of a trademark that was not independently registrable (due to descriptiveness, for example). In 2007, the Canadian Trademarks Office disposed of disclaimer requirements. While an applicant may voluntarily enter a disclaimer, such voluntary disclaimers are fairly uncommon.

The United States Trademarks Office continues to request disclaimers.

5. Consent agreements less effective

When a confusion objection is raised, the Trademarks Offices of both countries will accept a letter from the owner of the cited mark consenting to the use and registration of the applicant’s mark. In the United States, such consent is accorded great weight and is often effective in overcoming confusion objections.

In contrast, consent agreements are generally given limited weight in Canada, and rarely convince an Examiner to withdraw an objection. If the Canadian Office concludes there is a risk of confusion among consumers, despite an agreement between the parties, it will maintain the objection to fulfill its role of public protection. Nevertheless, a consent agreement may be helpful if it provides supplemental information to assist the Examiner in concluding that no likelihood of confusion exists.

6. Limited Madrid correspondence

Like the United States, Canada is now a member of the Madrid Protocol. Brand owners can use the Madrid Protocol to file an application in the U.S., for example, and subsequently apply to extend protection to Canada.

Where applicants use the services of a foreign representative before the International Bureau (WIPO), there is a procedural anomaly for Canadian designations. The Canadian Trademarks Office will not deposit all correspondence with WIPO, nor will it send correspondence to a foreign representative. Rather, the Trademarks Office will only send correspondence to the applicant or an appointed Canadian agent.

For more information on this topic, see our previous articles “Why you should designate Canada – and a Canadian agent – in your next Madrid application” and “Yes, CIPO really will be writing to your client instead of you.”

7. Nationwide protection

Federal and state-specific registrations are available in the United States. Federal registrations are generally considered superior but are only available if the mark is used in interstate or international commerce. While less expensive and quicker to obtain, state registrations only offer protection in the state in which the mark is registered.

Unless it is geographically restricted, a Canadian trademark registration gives brand owners protection in every province across the country and can be secured even where there is no inter-provincial or international trade.

8. Simple opposition procedures

Oppositions in Canada occur by way of summary proceeding and tend to be less expensive than the more complex procedures in place in the United States. In particular, the deposition process is considerably more restricted in Canada. As a result, a decision can be secured in Canada at a much lower expense, and often more quickly, than in the U.S.

9. Straightforward renewal procedure

In both countries, registered trademark rights are indefinite in term so long as the registration is properly maintained and renewed every ten years.

In the United States, a trademark owner must file a specimen of use and a Statement of Use between five and six years and upon renewal every ten years thereafter. In Canada, renewal is a relatively simple process; a trademark owner can maintain a registration by paying the renewal fees every ten years. Unless a registration is attacked, it is never necessary to provide proof of use.

10. Streamlined litigation procedures

In Canada, the majority of trademark litigation is carried out in the Federal Court, a single, unitary court that, unlike the United States, is not divided into circuits or districts. As a result, “jurisdiction shopping” generally does not occur in Canada. Additionally, Canada’s Federal Court is very familiar with trademark issues and disputes, with several judges having been leading intellectual property litigators before joining the Court, which can lead to more predictable results.

Canadian procedural rules permit a brand owner to commence a proceeding against an infringer in the Federal Court by way of action, a traditional Court proceeding, or application. An application is a more streamlined procedure based entirely on a paper record. Litigation by application allows a brand owner’s claim to be determined relatively quickly and efficiently, resulting in savings of more than 50% of the cost of a typical action.

Unlike in the U.S., where attorneys’ fees are generally not recoverable, in Canada, a successful litigant may recover a portion of incurred legal fees (typically 25-40%), together with all reasonable disbursements (such as expert fees, survey fees, etc.).

For more information on this topic, see our previous article “5 reasons why Canada is an attractive jurisdiction for trademark litigation.”

While Canada and the United States have similar systems for registering, protecting, and enforcing trademarks, it is important to be conscious of the procedural nuances of both countries when establishing business on both sides of the border. An experienced Canadian practitioner knowledgeable in these differences can assist brand owners in effective cross-border trademark portfolio management.

For more information on filing, prosecuting and enforcing trademarks in Canada, please reach out to a member of our Trademark & Brand Protection team.

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.