Canada Trademark Filing Guide
FILING
A. Requirements
If the applicant is not domiciled in Canada, a local address for service must be provided.
Joint applicants are not permitted in this jurisdiction.
Neither actual use nor intent to use is required for application. An application can be based on one of the following: (a) prior use in Canada; (b) making known in Canada; (c) use and registration (or eventual registration) in a jurisdiction where the applicant has a real and effective industrial or commercial establishment; or (d) intent to use in Canada.
The following information is required to complete an application:
name and address of the applicant;
representation of trademark (a depiction of the mark an applicant seeks to register);
list of goods/services;
dates of first use (If the application is based on use in Canada, a date must be provided.);
official filing fee.
If the application is based solely upon use and registration or eventual registration abroad, it is necessary to provide the name of a country in which the mark was used and provide information respecting the corresponding home country application or registration.
While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
name and address of the applicant;
representation of trademark (a depiction of the mark an applicant seeks to register) Note that a drawing is required unless the mark is a word mark;
list of goods/services;
dates of first use (If the application is based on use or making known in Canada, a date must be provided.);
official filing fee;
If the application is based solely upon use and registration or eventual registration abroad, it is necessary to provide the name of a country in which the mark was used and provide information respecting the corresponding home country application or registration.
The list of goods and services in this jurisdiction may specify:
a list of the common commercial names for the specific goods or services of interest.
Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
none. A power of attorney is not required. Although it is conceivable that the Trade-marks Office could request a power of attorney, it would be virtually unprecedented.
In this jurisdiction, the following type of registration is available:
national.
This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.
This country is not a member of the European Union; a Community Trademark is not effective in this jurisdiction.
No multinational regional registrations are available in this jurisdiction.
The official file cannot be accessed online.
Applications are officially searched as to prior trademarks; this takes approximately six months.
B. Priority
If an applicant's home country is a member of the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.
If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)
C. Classification
This jurisdiction does not use the Nice Classification System. Canada does not have any classification system.
If a trademark is or will be used in more than one class of goods and/or services, one application can cover multiple classes of goods or services, because this jurisdiction does not follow a classification system.
This jurisdiction does not follow a classification system and therefore has no class-related fees.
D. Representation
An application to register a trademark may be filed directly in this jurisdiction by:
the applicant, even if not a citizen of or domiciled in the jurisdiction (However, a Canadian representative for service must be appointed.);
a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.
IV. APPLICATION
A. Publication
The filing particulars of an application are made available to the public.
The filing particulars are made available to the public:
online.
The following application details are made available to the public:
mark;
name of applicant;
address of applicant;
application number;
application date;
goods/services;
priority claim information;
dates of first use;
representation of trademark.
Everything on file is available to the public.
B. Examination
Applications are examined in respect of:
formalities: i.e., for compliance with the filing requirements;
clarity: i.e., that descriptions are clear, and are understandable;
descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing goods or services of one individual or organization from those of other individuals or organizations;
deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality or geographic origins of the goods or services);
conflict with prior-filed earlier application or registration, prior-filed application or earlier unregistered rights resulting from an official search (The examiner will only object to third party marks on the Trade-marks Office database, whether registrations or earlier-filed applications. The examiner will not consider marks other than those on the Trade-marks Office database.);
whether the mark is primarily merely the name or surname of an individual who is living or has died within the preceding 30 years;
whether the mark would be mistaken for any anything identified in Section 9 of the Trade-marks Act, namely certain arms, crests, governmental words or symbols, flags, international symbols or emblems; anything scandalous, obscene or immoral; any matter falsely suggesting a connection to a living individual; a Section 9 mark published by a public authority or university; etc.;
whether the mark has become recognized in Canada as designating the kind, quality, quantity, etc., of the goods or services;
whether it is for use in association with a plant variety and is similar to a mark registered under the Plant Breeders' Rights Act and is misleading;
whether it is for use in association with a wine or spirit and includes a protected geographical indication, where the wine or spirit does not originate from the region indicated by the geographical indication.
Additional criteria apply for certification marks and distinguishing guise marks.
If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.
This jurisdiction does not have disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive). Disclaimers can be entered voluntarily. It is rare that a disclaimer will be required.
The order of the application process is as follows:
Examination, publication, registration.
C. Prosecution
Accelerated examination may not be requested.
The following rights are established by a pending application:
the filing date of the application establishes a home filing date for purposes of priority;
the pending application can be cited in official examination against a subsequent (later filed) conflicting application;
the pending application can be used in a third party opposition proceeding against a subsequent (later filed) conflicting application.
D. Opposition
An application can be opposed.
The following can be grounds for opposition:
proprietary rights, such as an earlier conflicting registration;
the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose or value of goods or of rendering of services or other characteristics of goods or services;
breach of copyright;
registered design rights (A registered design trade-mark can provide a ground of opposition. A registered industrial design could also theoretically provide a basis for a ground of opposition (in combination with s. 30(i) of the Trade-marks Act));
bad faith (e.g., deceptiveness, disparagement (While bad faith per se is not a ground of opposition, incorrect statements could support a ground of opposition in certain cases.));
rights in a company name;
unauthorized use of specially protected emblems or national insignia;
if the goods/services are not defined specifically and in ordinary commercial terms;
if the claimed date of first use precedes the actual date of first use;
if the application is based on proposed use in a case where the mark was used in Canada prior to the filing date;
if the mark or use of a mark would violate a law of Canada.
An application is published for opposition purposes after formal examination of the application.
The opposition period begins on the following date: After formal examination, the application is published for opposition.
The opposition period ends on the following date: Anyone may oppose the application within two months of publication. A three-month extension of time is available upon request and payment of the extension fee.
Anyone may oppose an application.
Oppositions can be filed online.
