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TRADEMARK LAW IN CANADA

This article gives a general description of trademark law in Canada. The information contained in this article is of a general nature only and is not intended to cover the entire area of law relating to trademarks in Canada. Furthermore, this information is not directed toward a particular factual situation, and does not constitute legal advice. If you have any questions of a legal nature, or of how the law applies in a particular situation, please consult with a lawyer or trademark agent.




Trademarks in Canada

A trademark is one or more words, or a series of letters or numbers, or a design, or shape, that is used by a person to distinguish wares or services manufactured, sold, leased, hired or performed by that person from those manufactured, sold, leased, hired or performed by others. "COCA COLA" and "BURGER KING" are both examples of well known trademarks.

Registered Trademarks

Trademarks may be registered in Canada pursuant to the Canadian Trademarks Act. The Canadian trademark registry is maintained at the Canadian Trademarks Office located in Ottawa.

The valid registration of a trademark in Canada in respect of any wares or services gives to the owner of the trademark registration the exclusive right to the use throughout Canada of the trademark in respect of those wares or services. This right is deemed to be infringed by a person not entitled to the registered trademark, who sells, distributes or advertises wares or services in association with a confusing trademark or trade name .

The valid registration of a trademark in Canada also prohibits the use of the registered trademark by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching to that trademark.

If you wish to protect your trademark in countries other than Canada, foreign trademark registrations are required in each of those countries.

Registering a Trademark in Canada

To register a trademark in Canada, a completed trademark application is filed by the applicant, or by a registered trademark agent acting on behalf of the applicant. The application is filed with the Canadian Trademarks Office, located in Ottawa. The government fee for filing the application is currently set at $CDN 300.00. Additional professional fees may be charged for the professional services of the registered trademark agent.

The filed trademark application is then examined by the Trademarks Office, to assess whether:

(a) the trademark application is in proper form ;

(b) the trademark is registrable ;

(c) the person applying to register the trademark is in fact and in law the person entitled to register the mark .

Where the Registrar is not satisfied that the trademark application should be refused, the Registrar then directs that the trademark application be advertised in the Canadian Trademarks Journal (a weekly publication), which gives an opportunity to any interested parties to oppose the application .

Trademark Oppositions

Trademark applications are opposed by the filing of a Statement of Opposition (and the payment of a government fee, currently set at $CDN 750.00). The Statement of Opposition sets out, among other things, the grounds or basis for the opposition. Interested parties may oppose a trademark application on the basis that:

(a) the trademark application is not in proper form ;

(b) the trademark is not registrable ;

(c) the person applying to register the trademark is not the person entitled to register the mark ;

(d) the trademark lacks distinctiveness .

If the Registrar of Trademarks considers that the Statement of Opposition does not raise a substantial issue for decision, he will reject the opposition. However, if the Registrar of Trademarks considers that the Statement of Opposition raises a substantial issue for decision, he will forward a copy of the Statement of Opposition to the applicant, who then files a Counter Statement with the Registrar (and serves a copy of the Statement of Opposition on the opponent).

Both the opponent and the applicant are then given an opportunity to submit evidence and to make representations to the Registrar of Trademarks (unless either the opposition or application is withdrawn, or deemed to have been withdrawn).

After considering the evidence and representations of the opponent and the applicant, the Registrar of Trademarks will then either refuse the application or reject the opposition.

If the trademark application is not opposed by a third party (or if it is opposed and the opposition is unsuccessful), the trademark may then proceed to registration upon completing the technical requirements set out in the Trademarks Act and upon the payment of a government registration fee (which is currently set at $CDN 200).

Upon registration, the "" symbol should be used next to the trademark to indicate that the mark has been registered (prior to registration the letters "TM" should appear next to any unregistered trademarks).

Trademark registrations last for a period of 15 years, and may be renewed upon the payment of a government fee (the government fee for renewing a trademark is currently set at $CDN 400).

Unregistered Trademarks

Unregistered trademarks are also entitled to protection in Canada, although the extent and scope of protection provided to unregistered trademarks will depend of factors such as the extent to which, and the manner in which the trademark has been used and has become known.

It is therefore strongly recommended that, where possible, trademarks be registered.

It is to be noted that Canadian trademark law also prohibits one from directing public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another and prohibits the "passing off" of wares or services as and for those ordered or requested.

Canadian law also prohibits one from making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to (i) the character, quality, quantity or composition, (ii) the geographical origin, or (iii) the mode of the manufacture, production or performance of the wares or services.

Trade-names

A "trade name" is the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual.

Trade names may be registered under applicable provincial or federal legislation. For example, a trade-name may be registered in Ontario under the province of Ontario's Business Corporations Act .


A BOUT THE AUTHOR

Philip B. Kerr is a Canadian lawyer, a registered patent agent and trademark agent, and a partner in the patent law firm of Kerr & Nadeau, whose law practice is restricted to patent law, trademark law and copyright law. He was called to the bar in 1986.

Kerr & Nadeau has two locations:

Ottawa Location:

Kerr & Nadeau
200 Isabella Street
Suite 405
Ottawa, Ontario
CANADA K1S 1V7

Telephone: (613) 238-2002
Facsimile: (613) 230-2725

Halifax Location:

Kerr & Nadeau
1959 Upper Water Street
Purdy's Wharf, Tower I, Suite 1800
Halifax, Nova Scotia
Canada, B3J 3R7

Telephone: (902) 422-6376
Facsimile: (902) 422-9149


For further information on trademarks, please feel free to visit Canadian Trademark Law, a free Canadian Website.







Footnotes and Statutory Provisions



"Distinctive",

"Distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner, from the wares or services of others, or is adapted so to distinguish them.



Form of Trademark Application,

Section 30 of the Trademarks Act provides:

An applicant for the registration of a trade-mark shall file with the Registrar an application containing

(a) a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used;

(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of wares or services described in the application;

(c) in the case of a trade-mark that has not been used in Canada but is made known in Canada, the name of a country of the Union in which it has been used by the applicant or his named predecessors in title, if any, and the date from and the manner in which the applicant or named predecessors in title have made it known in Canada in association with each of the general classes of wares or services described in the application;

(d) in the case of a trade-mark that is the subject in another country of the Union of a registration or an application for registration by the applicant or his named predecessor in title on which the applicant bases his right to registration, particulars of the application or registration and, if the trade-mark has neither been used in Canada nor made known in Canada, the name of a country in which the trade-mark has been used by the applicant or his named predecessor in title, if any, in association with each of the general classes of wares or services described in the application;

(e) in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada;

(f) in the case of a certification mark, particulars of the defined standard that the use of the mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of wares or the performance of services such as those in association with which the certification mark is used;

(g) the address of the applicant's principal office or place of business in Canada, if any, and if the applicant has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm to whom any notice in respect of the application or registration may be sent, and on whom service of any proceedings in respect of the application or registration may be given or served with the same effect as if they had been given to or served on the applicant or registrant himself;

(h) unless the application is for the registration only of a word or words not depicted in a special form, a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed; and

(i) a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.




"Registrable" trademarks,

A trade-mark is registrable if it is not:

(a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years (unless it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration);

(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin (unless it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration);

(c) the name in any language of any of the wares or services in connection with which it is used or proposed to be used;

(d) confusing with a registered trade-mark;

(e) a mark of which the adoption is prohibited by section 9 or 10 of the Trade-marks Act [these sections are reproduced below ]; or

(f) a denomination the adoption of which is prohibited by section 10.1 Trade-marks Act [this section is reproduced below ].




Section 9 provides:

(1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,

(a) the Royal Arms, Crest or Standard;

(b) the arms or crest of any member of the Royal Family;

(c) the standard, arms or crest of His Excellency the Governor General;

(d) any word or symbol likely to lead to the belief that the wares or services in association with which it is used have received, or are produced, sold or performed under, royal, vice-regal or governmental patronage, approval or authority;

(e) the arms, crest or flag adopted and used at any time by Canada or by any province or municipal corporation in Canada in respect of which the Registrar has, at the request of the Government of Canada or of the province or municipal corporation concerned, given public notice of its adoption and use;

(f) the emblem of the Red Cross on a white ground, formed by reversing the federal colours of Switzerland and retained by the Geneva Convention for the Protection of War Victims of 1949 as the emblem and distinctive sign of the Medical Service of armed forces and used by the Canadian Red Cross Society, or the expression "Red Cross" or "Geneva Cross";

(g) the emblem of the Red Crescent on a white ground adopted for the same purpose as specified in paragraph (f) by a number of Moslem countries;

(h) the equivalent sign of the Red Lion and Sun used by Iran for the same purpose as specified in paragraph (f);

(h.1) the international distinctive sign of civil defence (equilateral blue triangle on an orange ground) referred to in Article 66, paragraph 4 of Schedule V to the Geneva Conventions Act;

(i) any territorial or civic flag, or any national, territorial or civic arms, crest or emblem, of a country of the Union, if the flag, arms, crest or emblem is on a list communicated under article 6ter of the Convention and publicly given by the Registrar;

(i.1) any official sign or hallmark indicating control or warranty adopted by a country of the Union, if the sign or hallmark is on a list communicated under article 6ter of the Convention and publicly given by the Registrar;

(i.2) any national flag of a country of the Union;

(i.3) any armorial bearing, flag or other emblem, or any abbreviation of the name, of an international intergovernmental organization, if the armorial bearing, flag, emblem or abbreviation is on a list communicated under article 6ter of the Convention and publicly given by the Registrar;

(j) any scandalous, obscene or immoral word or device;

(k) any matter that may falsely suggest a connection with any living individual;

(l) the portrait or signature of any individual who is living or has died within the preceding thirty years;

(m) the words "United Nations" or the official seal or emblem of the United Nations;

(n) any badge, crest, emblem or mark

(i) adopted or used by any of Her Majesty's Forces as defined in the National Defence Act,

(ii) of any university, or

(iii) adopted and used by any public authority, in Canada as an official mark for wares or services,

in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;

(n.1) any armorial bearings granted, recorded or approved for use by a recipient pursuant to the prerogative powers of Her Majesty as exercised by the Governor General in respect of the granting of armorial bearings, if the Registrar has, at the request of the Governor General, given public notice of the grant, recording or approval; or

(o) the name "Royal Canadian Mounted Police" or "R.C.M.P." or any other combination of letters relating to the Royal Canadian Mounted Police, or any pictorial representation of a uniformed member thereof.

(2) Nothing in this section [Section 9] prevents the adoption, use or registration as a trade-mark or otherwise, in connection with a business, of any mark

(a) described in subsection (1) with the consent of Her Majesty or such other person, society, authority or organization as may be considered to have been intended to be protected by this section; or

(b) consisting of, or so nearly resembling as to be likely to be mistaken for

(i) an official sign or hallmark mentioned in paragraph (1)(i.1), except in respect of wares that are the same or similar to the wares in respect of which the official sign or hallmark has been adopted, or

(ii) an armorial bearing, flag, emblem or abbreviation mentioned in paragraph (1)(i.3), unless the use of the mark is likely to mislead the public as to a connection between the user and the organization.




Section 10 provides:

Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trade-mark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor.




Section 10.1 provides:

Where a denomination must, under the Plant Breeders' Rights Act, be used to designate a plant variety, no person shall adopt it as a trade-mark in association with the plant variety or another plant variety of the same species or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that denomination as to be likely to be mistaken therefor.




The "person entitled" to register a trademark:

Section 16 provides that:

(1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38 , to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with

(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

(c) a trade-name that had been previously used in Canada by any other person.

(2) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has duly registered in his country of origin and has used in association with wares or services is entitled, subject to section 38 , to secure its registration in respect of the wares or services in association with which it is registered in that country and has been used, unless at the date of filing of the application in accordance with section 30 it was confusing with

(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

(c) a trade-name that had been previously used in Canada by any other person.

(3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40 , to secure its registration in respect of the wares or services specified in the application, unless at the date of filing of the application it was confusing with

(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

(c) a trade-name that had been previously used in Canada by any other person.

(4) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous filing of an application for registration of a confusing trade-mark by another person, unless the application for registration of the confusing trade-mark was pending at the date of advertisement of the applicant's application in accordance with section 37 .

(5) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous use or making known of a confusing trade-mark or trade-name by another person, if the confusing trade-mark or trade-name was abandoned at the date of advertisement of the applicant's application in accordance with section 37 .

Section 37 provides that:

(1) The Registrar shall refuse an application for the registration of a trade-mark if he is satisfied that

(a) the application does not conform to the requirements of section 30 ,

(b) the trade-mark is not registrable , or

(c) the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending,

and where the Registrar is not so satisfied, he shall cause the application to be advertised in the manner prescribed.

(2) The Registrar shall not refuse any application without first notifying the applicant of his objections thereto and his reasons for those objections, and giving the applicant adequate opportunity to answer those objections.

(3) Where the Registrar, by reason of a registered trade-mark, is in doubt whether the trade-mark claimed in the application is registrable , he shall, by registered letter, notify the owner of the registered trade-mark of the advertisement of the application.




Section 38 provides that:

(1) Within two months after the advertisement of an application for the registration of a trade-mark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.

(2) A statement of opposition may be based on any of the following grounds:

(a) that the application does not conform to the requirements of section 30 ;

(b) that the trade-mark is not registrable ;

(c) that the applicant is not the person entitled to registration of the trade-mark ; or

(d) that the trade-mark is not distinctive .

(3) A statement of opposition shall set out

(a) the grounds of opposition in sufficient detail to enable the applicant to reply thereto; and

(b) the address of the opponent's principal office or place of business in Canada, if any, and if the opponent has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm on whom service of any document in respect of the opposition may be made with the same effect as if it had been served on the opponent himself.

(4) If the Registrar considers that the opposition does not raise a substantial issue for decision, he shall reject it and shall give notice of his decision to the opponent.

(5) If the Registrar considers that the opposition raises a substantial issue for decision, he shall forward a copy of the statement of opposition to the applicant.

(6) The applicant shall file a counter statement with the Registrar and serve a copy on the opponent in the prescribed manner and within the prescribed time after a copy of the statement of opposition has been served on the applicant.

(7) Both the opponent and the applicant shall be given an opportunity, in the prescribed manner, to submit evidence and to make representations to the Registrar unless

(a) the opposition is withdrawn or deemed under subsection (7.1) to have been withdrawn; or

(b) the application is abandoned or deemed under subsection (7.2) to have been abandoned.

(7.1) The opposition shall be deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit either evidence under subsection (7) or a statement that the opponent does not wish to submit evidence.

(7.2) The application shall be deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (6) or if, in the prescribed circumstances, the applicant does not submit either evidence under subsection (7) or a statement that the applicant does not wish to submit evidence.

(8) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application or reject the opposition and notify the parties of the decision and the reasons for the decision.



Section 40 provides that:

(1) When an application for registration of a trade-mark, other than a proposed trade-mark, is allowed, the Registrar shall register the trade-mark and issue a certificate of its registration.

(2) When an application for registration of a proposed trade-mark is allowed, the Registrar shall give notice to the applicant accordingly and shall register the trade-mark and issue a certificate of registration on receipt of a declaration that the use of the trade-mark in Canada, in association with the wares or services specified in the application, has been commenced by

(a) the applicant;

(b) the applicant's successor in title; or

(c) an entity that is licensed by or with the authority of the applicant to use the trade-mark, if the applicant has direct or indirect control of the character or quality of the wares or services.

(3) An application for registration of a proposed trade-mark shall be deemed to be abandoned if the Registrar has not received the declaration referred to in subsection (2) before the later of

(a) six months after the notice by the Registrar referred to in subsection (2), and

(b) three years after the date of filing of the application in Canada.

(4) Registration of a trade-mark shall be made in the name of the applicant therefor or his transferee, and the day on which registration is made shall be entered on the register, and the registration takes effect on that day.

(5) For the purposes of subsection (3), section 34 does not apply in determining when an application for registration is filed.


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