Trademarks Comparative Guide -

1 Legal framework

1.1 What is the statutory or other source of trademark rights?

Trademark rights in Canada find roots both in the federal Trademarks Act and as the common law. Trademark rights are regulated by the act, as well as related competition and criminal legislation.

While provincial laws and courts also impact on trademark rights, there is no separate system of provincial protection for trademarks in Canada.

Trademarks existing in Newfoundland before 1 April 1949 are governed according to the separate provincial laws of Newfoundland, which are not discussed here due to their limited application.

1.2 How do trademark rights arise (ie, through use or registration)?

Trademark rights arise through one of the following ways:

without registration, through use of a trademark in the normal course of trade in any part of Canada in connection with specific goods or services; and
through federal registration of a trademark in Canada, regardless of whether the mark has been used in Canada or abroad.

Under the second route above, a registration will provide exclusive protection for that trademark across all of Canada, even if the trademark has been used in one part of Canada only. Conversely, use without registration will provide protection only across the specific territory where the trademark has accrued a reputation and goodwill. Pending legislation will require a registered owner to prove use of a registered mark in Canada during the first three years following registration, in order for such owner to sue a third party for infringement of such mark during that three-year period. However, that law is not yet in force.

1.3 What is the statutory or other source of the trademark registration scheme?

The source of the trademark registration scheme is the Trademarks Act and the Trademarks Regulations made under the act. The Trademarks Regulations also implement the Madrid Agreement Concerning the International Registration of Marks, allowing owners of international registrations to request extensions of protection into Canada.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

Canadian law provides protection for the following marks:

trademarks, which consist of a sign or combination of signs used, or proposed to be used, by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others. A ‘sign' is a broad concept which includes a word or words, a personal name, a design, a letter or letters, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign;
certification marks, which are owned by a standard-setting body and used by third parties, intended to confirm that goods and services provided thereunder conform to such standards; and
an extensive list of prohibited marks, as specified in Section 9 of the Trademarks Act, including royal arms, crests or standards; flags of certain nations, including Canada; and any badge, crest, emblem or mark of any university or adopted and used by any public authority in Canada as an official mark for goods or services.

Geographical indications are protected under a separate scheme and are subject to separate requirements under the Trademarks Act.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

In general, under common law and the Trademarks Act, marks must be capable of distinguishing the goods or services manufactured, sold, leased, hired or performed by the mark's owner from those manufactured, sold, leased, hired or performed by others.

Specific bars to registration are discussed below under question 2.3.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

The Trademarks Act provides explicit protections for non-traditional marks, including sound marks, colour marks not tied to a particular size or shape, scent marks, taste marks and texture marks.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

The Canadian Intellectual Property Office (CIPO), a special government body responsible for the administration of copyright, patent and trademark rights in Canada, and which includes the Office of the Registrar of Trademarks, has control over registration procedures.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

For electronic applications, CIPO charges a filing fee of C$330 for each application for the first class of goods or services to which the application relates. Paper applications are C$430 for the first class. CIPO charges an additional C$100 for each additional class of goods or services to which the application relates, in both instances.

3.3 Does the trademark office use the Nice Classification scheme?

Goods and services must be grouped according to the Nice Classification scheme for purposes of filing an application or renewing a registration in Canada.

3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

‘Class-wide' applications are not allowed, and each applicant must identify specific goods and services in commercially ordinary terms. CIPO has published a manual of acceptable goods and services; it is accessible online via www.ic.gc.ca/app/scr/ic/cgs/ext/home.html. Notably, the list of descriptions in the manual is not exhaustive

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

Yes. In its application, an applicant is not required to include a statement that it (whether by itself and/or through a licensee) intends to use the trademark in Canada, or that the applicant is satisfied that it is entitled to use the trademark in Canada in association with the goods or services described in the application. However, by filing an application, the applicant is deemed to have already used the mark in Canada or to have an intention to do so.

An application for registration can be opposed on the basis that, as of the filing date of the application, the applicant was not using and did not intend to use the trademark in Canada in association with the goods and services specified in the application.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes, CIPO conducts a search of the Trademarks Register for prior-filed applications and registrations as well as ‘prohibited marks' (ie, marks afforded special protection under the Trademarks Act, as discussed in question 2.1), and performs a relative examination.

An application will be refused registration if it is found to be identical or confusingly similar to any mark or marks that are the subject of a prior application or registration. Prohibited marks are generally held to a different standard of similarity, meaning that an applied-for mark could also be refused if it were "consisting of, or so nearly resembling as to be likely to be mistaken for" a prohibited mark, regardless of other confusion factors considered in connection with other marks.

3.7 What types of examinations does the trademark office perform other than relative examination?

CIPO also performs examination on absolute grounds, which are discussed further below in response to question 3.8.

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

Yes, trademarks are also ineligible for registration if they are or consist of any of the following:

primarily merely the name or surname of an individual who is living or has died within the preceding 30 years;
matter which consists of, or so nearly resembles as to be likely to be mistaken for, a prohibited mark, including royal arms, crests, standards, flags, ‘official marks' of public authorities and universities, matter suggesting a false connection to actual individuals and insignia of various organisations;
scandalous, obscene or immoral matter;
denominations that are protected as plant variety names;
geographical indications identifying a wine, spirit, agricultural product or food; and
terms protected under the Olympic and Paralympic Marks Act.

With respect to refusal on grounds of descriptiveness, trademarks may be denied protection if they mislead the public as to:

the character, quality, quantity or composition of the goods or services;
the geographical origin of the goods or services; or
the conditions of, or persons employed in, the production of the goods or the performance of the services.

For purposes of assessing descriptiveness of an applied-for mark and confusion between marks, English and French terms are considered to be equal. Further, a mark may be refused registration if it is the name in any language of any goods and services in connection with which it is used or intended to be used.

Examiners may also refuse registration of any trademark on the grounds that it is not distinctive, in that the trademark is not capable of distinguishing the source of goods or services, either because it is commonly used in the industry or because it is inherently incapable of acting as an identifier of source (eg, the name of a colour for goods that are ordinarily that colour or a trademark that simply provides generic information, such as ‘Contents are hot').

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

No. However, refusals based on names or surnames, descriptiveness or lack of distinctiveness may be overcome where the applicant can demonstrate that its mark has been used across Canada (typically in all provinces and territories) and has acquired distinctiveness as a result thereof, all as of the filing date of the application.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

Yes, a third party may submit a notice of third-party rights to CIPO, prior to advertisement, but only on the following grounds:

confusion with a registered trademark;
lack of entitlement (eg, due to the third party's prior use of an unregistered trademark or ownership of a co-pending confusing application); or
where the application uses a registered trademark to describe its goods or services.

The registrar will place such notifications of third-party rights on the applicant's file, but will not provide any information to the third party about any action taken as a result of the notification.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

No. A trademark may be registered in Canada even if the mark is not used in Canada or anywhere else.

Pending amendments to the Trademarks Act will bar claims based on causes of action available for registered trademarks for the first three years of registration, unless such registered trademarks are in use in Canada or special circumstances exist that excuse the absence of use. After the first three years of registration, registered trademarks become vulnerable to summary cancellation proceedings based on non-use.

3.12 How much time does it typically take from filing an application to the first office action?

It currently takes about 12 to 14 months for the first office action to issue. If any objections are raised, the applicant will have six months to respond. In addition, a six-month extension is available as of right, with further six-month extensions available in certain circumstances.

3.13 How much time does it typically take from filing an application to publication?

In those rare cases where no examiner's reports are issued, an application can proceed to publication in about 12 months.

On average, however, most applications receive examiner's reports, which often entail several months for response and further review by CIPO. Accordingly, in most cases, it will take at least 28 months from the time an application is filed to publication (assuming that all of the examiner's objections can be overcome).

4 Appeals

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

Final decisions of the registrar may be appealed to the Federal Court of Canada within two months of the date on which notice of the decision was dispatched by the registrar.

4.2 What is the procedure for appealing a trademark office refusal?

An appeal must be filed by way of a notice of application with the Federal Court of Canada, and takes the form of a judicial review of a decision of the registrar. Where the appeal could affect another person, such as an appeal of a decision of the Trademarks Opposition Board (TMOB), the other person must be named as a respondent. Where there is no other party to the decision, such as a final refusal issued by the registrar, the proper respondent is the attorney general of Canada.

The appeal must be served on the registrar, and the appellant often elects to serve the registrar with a request to provide any relevant material in the possession of the TMOB. The appellant must also send a copy of the notice of application to the registered owner of any trademark referred to by the registrar in the decision under appeal, as well as any other person that was entitled to notice of the decision.

The appeal then proceeds in Federal Court based on the written record and can include an oral hearing. Unlike many applications for judicial review, the parties may file fresh evidence which was not before the registrar at first instance (although pending amendments, not yet in force, would require a party to seek leave from the Federal Court to file additional evidence).

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

The Federal Court's decision may be appealed to the Federal Court of Appeal of Canada. In rare circumstances, a decision of the Federal Court of Appeal may be appealed to the Supreme Court of Canada, but only if the Supreme Court grants the appellant leave to appeal.

5 Oppositions

5.1 Can a third party oppose a trademark application?

Yes.

5.2 Who has standing to oppose a trademark application?

Any person may file a statement of opposition, provided that it is founded upon one of the following accepted opposition grounds:

The application was filed in bad faith;
The application does not meet the formal requirements of the Trademarks Act;
The trademark is not registrable;
The applicant is not the person entitled to registration of the trademark;
The trademark is not distinctive;
The applicant was not using or did not intend to use the trademark in Canada in association with the goods or services specified in the application; or
The applicant was not entitled to use the trademark in Canada in association with those goods or services.

5.3 What is the timeframe for opposing a trademark application?

The statement of opposition must be filed within two months of the advertisement of the trademark application in the Trademarks Journal. However, it is possible to obtain a three-month extension of time to file the opposition without consent of the applicant.

5.4 Which body hears oppositions?

Oppositions are heard by the TMOB, which manages the proceedings on behalf of the registrar.

5.5 What is the process by which an opposition proceeds?

Any party may file a statement of opposition, along with the prescribed fee, within two months of advertisement in the Trademarks Journal (or five months, if an extension has been obtained). The statement must set out the name and address of the opponent and the grounds of opposition, in sufficient detail to enable the applicant to reply.

If the registrar considers that the opposition does not raise a substantial issue for decision, the registrar shall reject it and give notice of this decision to the opponent. If it does raise an issue, the registrar shall forward a copy of the statement to the applicant.

The applicant has two months to file a counterstatement. Thereafter, both parties shall be given an opportunity to submit evidence and make written and oral representations to the registrar, unless the opposition is withdrawn or the application is abandoned.

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

Final decisions of the registrar may be appealed to Federal Court within two months of the date on which notice of the decision is dispatched by the registrar.

6 Rights of registered and unregistered marks

6.1 What, if any, protection is afforded to unregistered trademarks?

Use of a trademark in connection with specific goods and services in a specific geographic region of Canada provides the owner with rights to prevent third parties from using the same or confusingly similar marks in connection with the same or similar goods and services in that same region. Specifically, owners of unregistered trademarks can bring actions for passing off under common law or the codified version of this action in the Trademarks Act. Passing off requires the owner to prove three elements:

the existence of goodwill or reputation based on use of the mark by the plaintiff;
a likelihood that the public will be deceived due to a misrepresentation by the defendant; and
actual or potential damage to the plaintiff.

Moreover, owners of unregistered marks or marks that have been ‘made known' in Canada can oppose registration of a confusingly similar mark by a later user on the basis of their prior unregistered rights.

6.2 What legal rights are conferred by a trademark registration?

Registrations expand upon the rights available to owners of unregistered marks. Some important distinctions are below:

Registered mark owners are entitled to exclusive use across all of Canada, not just the area in which they can prove use and reputation;
Registrations provide constructive notice of trademark rights to third parties;
Registrations provide prima facie evidence of trademark ownership rights;
Registrations provide an absolute defence, subject to their validity, against certain actions for infringement or passing off, or violations of French translation requirements in Quebec (unless a French version of the mark is also registered); and
Registered mark owners have a right of action to remedy any infringement against a person that uses an identical or confusingly similar mark in connection with similar goods or services, as well as a right of action to remedy any use of a registered trademark in a manner likely to depreciate the value of the goodwill attaching thereto.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

There is no separate register.

7 Enforcement and remedies for trademark infringement

7.1 What remedies are available against trademark infringement?

For violations of the Trademarks Act, including infringement of registered trademarks and passing off with respect to registered and unregistered trademarks, the court may make any order that it considers appropriate, including relief by way of injunction and the recovery of damages or profits, punitive damages and the destruction or other disposition of any offending goods, packaging, labels and advertising material, and of any equipment used to produce the goods, packaging, labels or advertising material.

7.2 What remedies are available against trademark dilution?

There are no specific remedies available against trademark dilution, but the law offers similar protection against depreciation of goodwill. Court decisions have made this remedy available in only limited situations, requiring all the following elements:

A third party has used a registered trademark (or a sufficiently similar mark), in a trademark manner (ie, applied to goods or services);
The registered mark is sufficiently well known and has substantial goodwill; and
Such third-party use is likely to affect the goodwill by depreciating its value.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

The law also provides remedies against the following:

making false or misleading statements tending to discredit the business, goods or services of another;
directing public attention to one's goods, services or businesses in such a way that causes or is likely to cause confusion in Canada;
passing off other goods or services for those ordered or requested; and
making use, in association with goods or services, of any description that is false in a material respect and likely to mislead the public as to:
- the character, quality or composition of the goods or services;
- the geographical origin of the goods or services; or
- the conditions of, or persons employed in, the production of the goods or the performance of the services.

7.4 What is the procedure for pursuing claims for trademark infringement?

Trademark owners that wish to pursue a claim for infringement or other violations of the Trademarks Act must do so through formal proceedings brought in either the Federal Court of Canada or a provincial superior court. In the Federal Court, parties can proceed in one of two ways:

by filing a statement of claim to commence an action; or
by filing a notice of application, which is a summary procedure based on a written record.

Trademark owners can also file applications seeking court orders for interim custody of infringing goods or detention of imports by the minister of public, safety and emergency preparedness.

Trademark owners may also pursue a claim for infringement, passing off or other contraventions of the Trademarks Act before a provincial superior court.

7.5 What typical defences are available to a defendant in trademark litigation?

Defendants can raise the following defences:

If the plaintiff is relying on registered trademark rights, defendants can seek to invalidate the underlying trademark registration on grounds that:
- the mark was not registrable at the date of registration;
- the mark is not distinctive at the time proceedings bringing validity of the registration into question are commenced;
- the mark has been abandoned;
- the applicant for registration was not the person entitled to secure the registration; or
- the application for registration was filed in bad faith.

Proceedings to invalidate a registration must be brought in Federal Court.

The defendant may claim loss of the plaintiff's rights at common law through one of the following ways:

loss of distinctiveness (ie, if the trademark is not exclusively associated with the plaintiff); or
abandonment by the mark's owner.

The defendant may also be able to rely on fraudulent activity by the plaintiff. Under common law, courts will not protect a plaintiff that is using a fraudulent mark or is using the mark in fraudulent practices.

7.6 What is the procedure for appealing a decision in trademark litigation?

The Federal Court's decision may be appealed to the Federal Court of Appeal. In rare circumstances, a decision of that court may be appealed to the Supreme Court of Canada, but only if the Supreme Court grants the appellant leave to do so.

A decision of a provincial superior court can be appealed to that province's court of appeal. In rare circumstances, an appeal of a decision of a provincial court of appeal may also be sought in the Supreme Court of Canada, subject to the aforementioned leave requirements.

8 Maintenance and removal of registrations

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

The initial term and renewal term are each 10 years.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

To renew a registration, a fee must be paid in the six months before expiration of the initial term or renewal term and the later of:

the end of the six-month period after the end of the initial period or the renewal period; and
the end of the two-month period that begins after the date of the registrar's renewal notice.

Owners must also group goods and services according to the Nice Classification System before the Canadian Intellectual Property Office (CIPO) will process a renewal, in the event this has not previously been done.

8.3 What are the grounds for cancelling a trademark registration?

In Federal Court, the validity of a registration may be challenged on the following grounds:

The mark was not registrable at the date of registration;
The mark is not distinctive at the time of proceedings;
The mark has been abandoned;
The applicant was not the person entitled to secure the registration; or
The application for registration was filed in bad faith.

Additionally, through summary expungement proceedings before CIPO, a registration is liable to be expunged or amended to have goods or services not in use struck from the registration if the mark has not been used in Canada within the prior three years in association with the goods or services covered by the registration.

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

Although historically rare in practice, the registrar is statutorily empowered to require, at any time, the registered owner of a trademark to furnish evidence of use of that mark in Canada within the prior three years in association with the goods or services covered by the registration, upon provision of three months' written notice.

The registrar is expected to commence a pilot project seeking evidence of use from owners of registered trademarks. The registrar will target two groups of registrations for this initiative: those registered a threshold number of years ago and those exceeding a threshold number of Nice classes. Details are as yet unavailable.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

To seek cancellation of a registered mark on one of the grounds listed in question 8.3, a claimant must commence a proceeding in the Federal Court of Canada.

In contrast, to initiate a summary expungement proceeding before CIPO, any person that makes a written request and pays the prescribed fee can ask the registrar to demand that a registered trademark owner furnish evidence of use of its mark in Canada in association with the goods or services covered by the registration. If insufficient or no evidence is provided to confirm that the mark was used in Canada at any time during the three-year period immediately preceding the request, and the owner is unable to explain special circumstances excusing non-use, then the registration will be expunged from the register, in whole or in part, in whole or in part.

8.6 What is the procedure for appealing a decision cancelling a registration?

To appeal decisions against cancellation proceedings in court or summary expungement proceedings before CIPO, the trademark owner or the party seeking cancellation may appeal the final decision of the registrar to Federal Court within two months of the date on which notice of the decision was dispatched by the registrar.

9 Licensing

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

A licence agreement may be written or unwritten. In both cases, however, the licensor must retain some control over quality: the owner must have, under the licence, direct or indirect control over the character or quality of the goods or services.

Where a written licence agreement expressly provides the licensor with rights of inspection and control over quality, courts will typically presume that the licence is valid without evidence of the licensor exercising such rights, unless there is clear evidence to the contrary. If the licence is unwritten, courts are more likely to require evidence of inspections and/or actual control.

Providing public notice of a licence to consumers is purely voluntary. However, if the user provides public notice that the mark is licensed and gives the identity of the mark's owner, a rebuttable presumption arises that the owner controls the character or quality of the goods and services.

9.2 Must trademark licences be recorded with the trademark office or other governing body?

It is possible to record a licence for a registered mark, but it is not necessary to do so.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

Yes. A licensor may lose its rights in a trademark by failing to maintain control over the character or quality of the licensee's goods and services.

10 Protection of foreign trademarks

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

While statutory law in Canada does not specifically provide for protection of foreign trademarks, Canadian courts have allowed foreign companies to bring actions for passing off on the basis that they have some goodwill to protect in Canada, even if they do not do business in the country.

To bring an action on this basis, the company must provide evidence of its reputation in Canada, specifically showing that the mark has become ‘well known' throughout Canada, primarily by virtue of advertising. Specific damage to the plaintiff and an intent to do business in the jurisdiction are not necessary, but may impact on the remedies available. Bad faith on the part of the defendant is not required, but may influence the outcome.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

Yes, applicants can request a territorial extension into Canada based on the registration of a trademark on the International Register, pursuant to Article 3ter of the Madrid Protocol.

Responses Provided by Neil Melliship and Jeffrey Vicq, Clark Wilson LLP (The authors wish to acknowledge the valuable assistance of Caroline Camp and David Bowden, both of Clark Wilson LLP)

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: Trademarks Comparative Guide