Filing a Trademark Application in Canada: Characteristics of the Canadian Trademark Law

Trademark application in CanadaThe registration process of a trademark in Canada is in some ways extraodinary when compared to the registration practices in other countries.

The most important characteristics of the Canadian trademark registration process are summarized below.

1. No Madrid Protocol

Canada belongs to a only a handful of industrialized countries in the world, which have neither joined the Madrid Agreement (Agreement) nor the Protocol of the Madrid Agreement (Madrid Protocol), as discussed elsewhere.

However, since Canada has signed the Paris Convention (PC), the priority of a foreign trademark application can be validly claimed in a Canadian trademark application. Moreover, the applicant can claim the priority of the trademark application in Canada in a foreign trademark filing. A prerequesite of the validity of the priority claim is that the signs and the goods and services of the first and subsequent trademark applications are essentially identical.

2. Obligation to Use the Trademark

Before a trademark can be registered in Canada, the applicant of the trademark must generally use the trademark in Canada. The application may be filed on the basis of a proposed use in Canada or, if the trademark is already used in a a foreign country (use abroad) on the basis of a registered trademark in the country of origin of the applicant. Furthermore, a trademark application may be filed for a mark, which is not yet used in Canada, but has nevertheless become known to the public in Canada.

3. No Classification of Goods and Services

In Canada, the goods and services claimed are not classified according to Nice classification. The trademark application must only provide a list of goods (Canadian engl. “wares“) and services for which protection is sought. No class fee is charged at the CIPO. However, it should be made sure that the claimed goods and services are used in Canada or that the use of the trademark for the goods and services is at least intended by the applicant (see item 2).

4. Declaration of Use

If the trademark application in Canada is filed on the basis of a proposed use, a declaration of use must be filed with the CIPO. In this declaration, the date of the first use of the trademark in Canada must be provided for each of the claimed goods and services. The time limit for filing this declaration can be extended up to three times.

5. Filing a Certificate of Registration

If the trademark application in Canada is filed on the basis of a foreign registration, a trademark certificate must be filed with the trademark office in Canada. If the trademark certificate is not written in English language, a translation thereof into English language must be provided.

6. End of the Grace Period of Non-use

After expiry of a time limit of three years from the registration of the trademark in Canada, any third party may request that the applicant provides documentary proof of the use of the trademark. If such a request is filed by a third party, it is necessary to proof the use of the trademark in Canada for each good and service claimed in the application. If no proof of the use can be provided, the trademark will be partially or fully cancelled.

7. Prohibited Trademarks

In Canada, some kind of signs are excluded from trademark protection. A simple word, which is predominantely a given name or family name of a person, cannot be protected by a trademark. An exception can be made, if the person whos name should be registered as a trademark has died more than 30 years before the trademark application is filed. Also, as in other countries descriptive or non-distinctive signs cannot be protected by trademarks. The CIPO will assume that the relevant consumers are familiar with both, the English and French languages.

8. Power of Attorneys

Although it is not required by law to submit a signed power of attorney, the CIPO can request at any time to provide proof that the representative having filed the application in the name of the applicant is authorized by the applicant.

9. Registration Procedure

The examination of the tradmark is generally carried out within a time frame of 4 to 8 months after filing the application. The total registration process can typically be completed within a time frame of  18 to 24 months from filing the application.

After the publication of the registration third parties can file oppositions against the registered trademark.

10. Renewal of Trademarks

In Canada, the normal term of protection expires 15 years after registration of the trademark. The registered trademark may be renewed every 15 years.

A registered trademark may at any time be cancelled for non-use, if requested by a third party (see item 6).

Foto: © Jamie McCaffrey, [CC BY 2.0]

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