INTELLECTUAL PROPERTY

Trademark protection in Canada

What is a Trademark?

In Canada, a trademark is a word(s), a graphic design or a combination of words and graphics that is used to distinguish the goods or services of one business from its competitors in the marketplace.

Colours, sounds, scents, tastes, textures, 3-D shapes, moving images, holograms and unique forms of packaging can also qualify for protection as trademarks.

How is a Trademark Chosen?

A trademark application may be filed before or after the mark is adopted. However, we recommend that searches be conducted prior to adoption of a new mark.

A preliminary search will only identify obvious obstacles to registration of a proposed mark. A comprehensive search goes deeper. It investigates trademark registries, business and corporate name directories, domain name registries, web pages, dictionaries and atlases.  It will also attempt to identify marks that may sound alike or have a similar meaning. The search results are then reviewed by counsel who prepares a written opinion as to whether there are any likely obstacles to the adoption and/or registration of the proposed trademark.

Since trademark rights are generally recognized nationally, we recommend that similar searches be conducted in each country in which the trademark is intended to be used.

Should Trademarks be Registered?

Although some rights to a trademark may accrue through use in the marketplace in Canada, it is highly recommended that applications be filed in each jurisdiction where the trademark is used or intended to be used. Some jurisdictions do not recognize trademark rights without registration.

Registration in Canada grants the owner the exclusive right to use the trademark across Canada in association with the goods and services listed in the application. In addition to giving notice to the public of your exclusive right to the trademark, a registration is especially helpful in protecting that right if a dispute subsequently arises.

Most countries in the world adhere to an international treaty which regulates the orderly filing of trademark applications in multiple countries. This treaty stipulates that an applicant may file subsequent applications in additional countries within 6 months of the filing the first application for the same trademark, and these additional trademark applications will be effectively backdated to the filing date of the first application. In other words, the applicant may assert priority over any trademark applications subsequently filed in foreign jurisdictions for a period of 6 months.

In addition to filing trademark applications in Canada, I also file applications in other countries through either the Madrid International System for the registration of marks, or by retaining associate law firms located in countries of interest whom we know are qualified in this specialized area of the law. One method of international filing may be recommended over the other depending on legal risks and costs.

Do Trademark Rights Automatically Expire?

No. Unlike copyright and patents, trademark rights do not automatically expire after a set time period. Trademark rights may be protected as long as the trademark remains in use.

However, trademark registrations need to be renewed every ten years in Canada. The term varies in other countries. We track the trademark registrations for our clients in each country and, where possible, will remind our clients when a registration is due for renewal.

Can Trademarks be Sold or Licensed?

Yes, with certain restrictions, trademarks and their related applications or registrations can be sold or licensed to third parties in Canada.

Since trademarks serve as indicators of a single source of goods or services, families of similar marks should be sold as a group and, when licensing, the owner should maintain control over the quality or character of the goods and services associated with its trademark by the licensees.

If confusingly similar trademarks are used by various parties in a common marketplace without proper controls, the trademark owners may lose their right to the exclusive use of those trademarks. Trademark rights must be protected by constant vigilance.

What are the Steps to Register a Trademark in Canada?

1. Formalities

As your agent, my office files an application with the Canadian Intellectual Property Office (“CIPO”). The application will receive a filing date and an application number from CIPO. The application will be entered on the Canadian Trademarks Registry and other databases maintained by external companies. The application is now described as ‘Pending’ and moves to step two.

2. Examination

A trademark examiner will review the application and determine if the trademark can be approved for advertisement in the Trademarks Journal. If it cannot be approved, my office will be advised.  I will then work with you  to amend the application for approval. We may also submit written argument to attempt to overcome any substantive objections. Applicants are granted 6 months to respond to any objections and are entitled to at least one 6-month extension of time if necessary.

If amendments and/or argument fail to overcome the examiner’s objections, you may elect to abandon the application or it may be refused. If the application is refused, it is possible to appeal an examiner’s decision through the courts. Please note that if no response is filed to the examiner’s objections per the stipulated deadlines, the application will be marked as abandoned and cannot be revived.

3. Advertisement

Once approved, the application will be published in one issue of the Trademarks Journal (published weekly and available for viewing on the CIPO web site). Within two months of being advertised, the application can be opposed by someone else and will then be removed from the normal processing cycle until the opposition has been resolved. S

4. Opposition

If the application is opposed after being advertised in the Journal, the Opposition Board will forward to my office a copy of the statement of opposition. Should you wish to contest the opposition, we will have one month to serve and file a counter statement, although reasonable extensions of time are usually granted upon request. Both parties will, in turn, have an opportunity to file affidavit evidence and written arguments, as well as to make submissions at an oral hearing.

An opposition is a complex adversarial proceeding. Most proceedings are resolved during the course of the opposition, but a complete opposition may last more than two years and, in most cases, the legal fees incurred cannot be recovered from the opposing party. 

5. Registration

If the application is not opposed, or if the opposition is withdrawn or is unsuccessful, the trademark will be eligible for registration and a certificate of registration will be issued automatically.

Where Can I Get More Information?

You can get more information by visiting the web sites for:

Canadian Intellectual Property Office
www.cipo.ic.gc.ca

Or by contacting:

Valerie Edward
Edward-IP
100-5063 North Service Road
Burlington, Ontario
L7L 5H6

Telephone: (905)-975-7768
Email: valerie@edward-ip.com

A New Way for Canadian Businesses to File Trademark Applications in Other Countries

.Canada is a member of the Madrid System for the international registration of marks.

This system permits Canadian businesses to file a single trademark application through the World Intellectual Property Office (WIPO) to register the trademark in multiple countries. Foreign businesses can similarly extend their trademark rights into Canada by filing a single trademark application through WIPO. The entire system is centrally administered by the World Intellectual Property Office (WIPO).

What is an International Trademark Registration?

An “international trademark registration” is recorded on the “international register” maintained by WIPO. Unfortunately, these titles are somewhat misleading. Recording an “international trademark registration” on the international register does not automatically grant the registrant exclusive worldwide rights in the mark. The “international register” may be better described as an international database of trademarks registered in multiple jurisdictions.
Each “international trademark registration” relates to a single mark, but will contain a collection of pending trademark applications or trademark registrations in multiple countries.

Each international trademark registration has multiple components. The applicant must have a “base” registration (or pending application) in their home country that identifies the trademark and its associated goods and services. The applicant must then file an application for an international trademark registration designating each foreign jurisdiction where they want to assert registered trademark rights. These foreign applications are known as “protocol applications”. If they mature to registration, they become known as “protocol registrations”. Thus, an international trademark registration will contain multiple protocol applications/registrations.

After filing, the international application is examined by WIPO to ensure that it satisfies formal requirements such as the identification of a corresponding basic application and payment of the required fees. If there are no objections to these formalities, the international application will mature to an “International Registration”. 

After the International Registration is issued by WIPO, each protocol application is subject to substantive examination by the trademark office in each designated country based on its own domestic law.  National trademark offices are entitled to demand amendments and/or refuse registration for the applied-for-mark according to national law. Thus, a protocol trademark application may be accepted in some designated jurisdictions but refused in others. 

What is the Nice Classification System?

The Nice Classification System is a standardized classification system defined by another international treaty known as the Nice Agreement. It organizes goods and services for the purpose of filing trademark applications into 34 classes of goods and 11 classes of services.

Generally speaking, goods are classified according to their purpose or function, and by the material from which the good is made. Distinction is also drawn between finished products and raw materials or partially processed goods. Services are grouped broadly. Applicants may find that their product lines and services span multiple classes. Consider a jewelry store. The retail sale of jewelry is a service within class 35. Jewelry appraisal is a financial service in class 36. Jewelry repair is a service in class 37 while the casting or manufacture of jewelry for others is a service in class 40. As goods, articles of jewelry fall under class 14 as goods made of precious metals.
The Nice Classification System is a formality for the administration of the trademark registers and has no substantive impact on the scope of the trademark registration in law. This means that when evaluating two similar trademarks for confusion, the fact that the goods and services associated with each mark fall into a different class is not significant. For example, the registration of confusingly similar marks associated with the retail sale of jewelry (class 35) and jewelry repair (class 37) would likely be prohibited despite since those services are sold in the same lines of trade despite the different classification. There is no appeal from any disagreement with WIPO respecting the classification of goods and services.