Trade-mark Practice in Canada: A Practical Guide
Theresa M. Corneau (ed.)
Smashwords Edition
2011
Borden Ladner Gervais LLP
Canada
Trade-mark Practice in Canada: A Practical Guide
Copyright © 2011 Borden Ladner Gervais LLP
All rights reserved. Although this is a free book, it remains the copyrighted property of the authors, and may not be reproduced, stored in a retrieval system, copied, or transmitted in any form without prior written permission of the authors. If you found this book to be useful, please encourage others to download a copy.
Published in 2011 by Borden Ladner Gervais LLP
ISBN 978-0-9730750-7-6
The information in this publication is of a general nature, and should not be regarded as legal, accounting, or other professional advice. Intellectual Property law is complex and developing rapidly, and must be considered in the circumstances of each individual transaction, case, or issue. If legal or other expert advice or assistance is required, the services of a competent professional should be sought.
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About the Cover
Charis
Tsevis
The Maple Leaf Design was created by Charis Tsevis, who is based in Athens, Greece. He serves global clients and he frequently contributes to prominent publications with articles on design theory, aesthetics, and cyberculture. His work has been awarded at Epica, NPSA, and Ed-Awards in the United States and Europe. Charis Tsevis has studied design and advertising in Athens and Milan and he now teaches Typography and Editorial Design at AKTO College.
Chapter 1: General Trade-mark Practice in Canada
Chapter 2: Procedural Requirements
Chapter 3: Specific Requirements for Canada
Chapter 4: Special Trade-mark Applications in Canada
Chapter 5: Opposition Proceedings
Chapter 6: Summary Cancellation Proceedings
Chapter 7: Trade-mark Infringement and Passing Off
Chapter 8: Due Diligence Process
Borden Ladner Gervais LLP has for many years acted as Canadian counsel to several national and multinational companies and worked with colleagues in numerous foreign law firms to provide advice on trade-mark law and practice in this country. We have frequently been requested by clients to respond to inquiries concerning the trade-mark application process and practice in Canada and primarily the differences between the Canadian and US practice.
Chapters 1 through 3 summarize general trade-mark practice in Canada, including the procedural and specific requirements for filing trade-mark applications. Chapter 3 highlights some of the unique aspects of these requirements and the relevant case law related to prohibited marks, including official marks and geographical indications of origin. The chapter also discusses French language requirements and exceptions, as well as sanctions and recourses under the Charter of the French Language. Chapter 4 focuses on special trade-marks in Canada, including certification marks, distinguishing guises, and related issues. Chapters 5 through 7 focus on adversarial and/or contentious proceedings such as oppositions, cancellation, passing off, and infringement, and discuss the relevant case law. Finally, chapters 8 and 9 provide an overview of issues related to due diligence and domain names.
We hope this new publication provides guidance and serves to highlight the nuances of the Canadian trade-mark application process and related practice.
We intend to publish subsequent editions of Trade-mark Practice in Canada: A Practical Guide, and we would appreciate receiving suggestions about possible additions or changes for revised editions.
April 2011
Tracy
Corneau
Borden Ladner Gervais LLP, Ottawa
Telephone:
613-787-3564
Email: tcorneau@blg.com
I gratefully acknowledge the contributions of my colleagues to this book. Their significant undertaking to commit the time necessary to research, write, and review chapters is deeply appreciated.
Geneviève
Bergeron
Geneviève Bergeron is a partner in the Montreal office. Her practice focuses on all aspects of intellectual property and information technology. She has an extensive practice in trade-mark law that includes search opinions, clearances, preparation, and prosecution of trade-mark applications, oppositions and cancellation proceedings, property rights transfers, and negotiation of trade-mark licence agreements. She has expertise in the drafting of distribution agreements and subcontracting agreements involving all aspects of IP and IT law for clients in all types of business. She also provides advice in website-rel ated matters such as the drafting of appropriate disclaimers, terms and conditions, online agreements, copyright and trade-mark use, and privacy policy as well as with respect to the application of the Charter of the French Language in the IP and IT sectors. Geneviève is a member of the Canadian Bar Association, INTA, IPIC, and IT.Can.
Theresa
M. Corneau
Theresa M. Corneau is a partner in the Ottawa office. She has extensive experience in all areas of Canadian and international trade-mark practice including searches, preparation and prosecution of trade-mark applications, opposition proceedings, trade-mark licensing, and property rights transfers. Her practice also involves the drafting and filing of copyright matters, the drafting of licence agreements, and the preparation and presentation of in-house trade-mark seminars to clients. She has been featured in numerous IP publications and has spent several years as a lecturer, speaker, and tutorial instructor for McGill University and IPIC. She has been a committee member on various trade-mark topics for IPIC, INTA, ECTA, and AIPPI.
Bradley
J. Freedman
Bradley J. Freedman is a partner and the Technology Law Practice Leader in the Vancouver Office. He is a member and former director of the Information Technology Law Association of Canada (IT.Can), and a member of the Canadian Bar Association, the American Bar Association, and the International Technology Law Association. His practice focuses on technology, intellectual property, the Internet, electronic commerce, and related matters. He is ranked as a leading trade-mark professional in the World Trademark Review for 2011 and is included in the 2011 edition of The Best Lawyers in Canada and the 2010 Canadian Legal Lexpert Directory. Bradley is a domain name dispute arbitrator for the World Intellectual Property Organization and the B.C. International Commercial Arbitration Centre.
Anne
Lau
Anne Lau is an associate in the Vancouver office. Anne has experience in all areas of Canadian trade-mark practice including searching, preparation and prosecution of trade-mark applications, opposition proceedings, licensing, and property rights transfers. She also has experience managing international trade-mark portfolios and international filings. Anne is a member of the Law Society of British Columbia, the Patent and Trademark Association of British Columbia, and the Intellectual Property Institute of Canada.
Kathleen
Lemieux
Kathleen Lemieux is a partner in the Ottawa office and is fully bilingual, practising in both English and French. Kathleen assists clients with the development, administration, and protection of intellectual property rights, including, in particular, trade-marks and copyrights. She has a wide range of experience in advising clients in trade-mark opposition and cancellation proceedings, and in assisting with litigation involving intellectual property rights. Kathleen also provides advice on transactions involving intellectual property, such as licensing agreements. She is the editor of the BLG IP newsletter and is involved in various committees for IPIC, INTA, CBA, and AIPLA. She is also a member of the Canadian Bar Association and the County of Carleton Law Association.
LuAnne
Morrow
LuAnne Morrow is a lawyer and trade-mark agent in the Calgary office. She practises IP law particularly in the areas of trade-marks and copyright, entertainment, and advertising/sponsorship law for clients in a wide variety of industries. Her other practice areas include patent licensing, software licensing and development, and Internet and computer law. She was selected by her peers for inclusion in the 2010 and 2011 editions of The Best Lawyers in Canada for intellectual property law. LuAnne has been a member of the Alberta Bar Association since 2002 and is a member Canadian Bar Association and INTA. She is an associate member of the Intellectual Property Institute of Canada, and Past Chair of the Canadian Bar Association—Intellectual Property and Technology Southern Alberta Subsection.
Hafeez
Rupani
Hafeez Rupani is an associate in the Ottawa office. His practice focuses on the resolution of trade-mark, copyright, domain name, and related commercial disputes before all levels of court. Hafeez has represented clients in trade-mark infringement, passing off, and expungement proceedings before the Federal Court; trade-mark opposition and cancellation proceedings before the Trade-marks Opposition Board; tariff proceedings before the Copyright Board of Canada; and subsequent judicial review proceedings before the Federal Court of Appeal. He assists clients in the acquisition, licensing, and enforcement of intellectual property rights in Canada and around the world, and in advising clients on the application of intellectual property rights in employment and online contexts, including social media. He is a member of the Canadian Bar Association, Ontario Bar Association, IPIC, INTA, Advocates Society, and CCLA.
Kathryn
E. Szymczyk
Kathryn E. Szymczyk is an associate in the Ottawa office and is conversant in Russian. Her practice focuses on all aspects of trade-mark law including prosecution, opposition, licensing, and enforcement. Kathryn also handles the prosecution of industrial designs and provides advice on domain name and trade-mark issues on the Internet. She was the Head of the Russian Representative Office of a Canadian firm from 2000 to 2003 and then a director overseeing a number of offices for an Eastern European IP firm in the Balkans from 2005 to 2008. She is familiar with the European Community trade-mark system and has extensive experience dealing with international registrations made through the Madrid System. Kathryn was recognized as "highly recommended" in intellectual property law in Russia by Global Counsel 3000 and ranked as a leading trade-mark professional in the World Trademark Review for 2011. She is a member of the Canadian Bar Association, IPIC, CCLA, the North American Anti-Counterfeiting Subcommittee of INTA, and the Vice Chair of the MARQUES Brands and Marketing Committee.
Jessica
Yeung
Jessica Yeung is a trade-mark agent in the Vancouver office and is fluent in English, Cantonese, and Mandarin. Jessica has experience in all areas of Canadian trade-mark practice including searches, preparation and prosecution of trade-mark applications, opposition proceedings, trade-mark licensing, and renewals. She is a member of the Patent and Trademark Association of British Columbia.
GENERAL TRADE-MARK PRACTICE IN CANADA
In Canada, the law related to trade-marks and unfair competition, including passing off, is covered by both federal statute and provincial common law. The current federal statute, the Trade-marks Act,[1] which has codified much of the common law with respect to trade-marks, creates a regulatory system that encompasses registered as well as unregistered trade-marks.[2] A foundational purpose of the Act and the common law is to create a regulatory system that ensures that commercial considerations and the rights acquired by way of trade-mark use and registration are protected, while contemporaneously safeguarding the public from any confusion, misrepresentations, or deceit with respect to the origin and quality of goods and services.
Trade-mark protection and enforcement is practised by way of both regulatory and non-regulatory proceedings. Regulatory proceedings consist of quasi-administrative/quasi-judicial trade-mark opposition and cancellation proceedings, which generally serve to prevent the registration of a trade-mark and expunge the registrations of unused trade-marks, respectively. Non-regulatory proceedings are court proceedings that, in general, deal with trade-mark infringement, depreciation of goodwill, and the expungement of trade-mark registrations and with common law rights, including those associated with unfair competition and passing off.
The Supreme Court of Canada in Mattel Inc. v. 3894207 Canada Inc.[3] distilled the purpose and basis of trade-marks and trade-mark law to the following:
Trade-marks are something of an anomaly in intellectual property law. Unlike the patent owner or the copyright owner, the owner of a trade-mark is not required to provide the public with some novel benefit in exchange for the monopoly. Here, the trade-mark [BARBIE] is not even an invented word like "Kodak" or "Kleenex." The appellant has merely appropriated a common child's diminutive for Barbara. By contrast, a patentee must invent something new and useful. To obtain copyright, a person must add some expressive work to the human repertoire. In each case, the public through Parliament has decided it is worth encouraging such inventions and fostering new expression in exchange for a statutory monopoly (i.e. preventing anyone else from practising the invention or exploiting the copyrighted expression without permission). The trade-mark owner, by contrast, may simply have used a common name as its "mark" to differentiate its wares from those of its competitors. Its claim to monopoly rests not on conferring a benefit on the public in the sense of patents or copyrights but on serving an important public interest in assuring consumers that they are buying from the source from whom they think they are buying and receiving the quality which they associate with that particular trade-mark. Trade-marks thus operate as a kind of shortcut to get consumers to where they want to go, and in that way perform a key function in a market economy. Trade-mark law rests on principles of fair dealing. It is sometimes said to hold the balance between free competition and fair competition.
Fairness, of course, requires consideration of the interest of the public and other merchants and the benefits of open competition as well as the interest of the trade-mark owner in protecting its investment in the mark. Care must be taken not to create a zone of exclusivity and protection that overshoots the purpose of trade-mark law.
A. THE TRADE-MARKS ACT: OVERVIEW
The Act was enacted in 1954 and arose from the dissatisfaction with its preceding legislation — namely, the Unfair Competition Act of 1932 and Canada's first "Dominion Act" dealing with trade-marks, the Trade-mark and Design Act of 1868. The Trade-mark and Design Act as well as the Unfair Competition Act were considered too narrow in scope, difficult to interpret, and contradictory.
1. What Is a Trade-mark?
Under section 2 of the Act, a trade-mark is defined as follows:
"trade-mark" means
(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade mark.
While the term is not defined in the Act, a "mark" must be something that can be represented visually and, in association with wares at least, use of a verbal description is not use of a trade-mark within the meaning of the Act.[4] As a result, sounds, scents, and holograms, for example, will not currently meet the definition of a "trade-mark" in Canada.
2. Types of Trade-marks
In Canada, the Act enumerates four definitions of a trade-mark. These definitions permit the registration of the following trade-mark types.
a. Word Marks
A word mark is represented in block letter format and generally affords the owner of a block letter trade-mark registration the broadest protection. In particular, a block letter word mark is considered to encompass acceptable use of the trade-mark whether or not the mark is used in a particular font, colour, or design. By contrast, if registration is sought and/or obtained for a particular design or font and the mark is not used in Canada in such manner, the registration is subject to cancellation on the basis of non-use.[5] As an extension to simple word marks, slogans may also be registered as trade-marks.[6]
b. Design Trade-marks (Logos)
A design, alone or in conjunction with words, may be registered as a trade-mark. Notably, a composite mark (a trade-mark comprising both design and word elements), when sounded, is not registrable pursuant to section 12(1)(b) of the Act if it contains word elements that are:
(1) 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; and also
(2) not the dominant feature of the mark.
c. Special Trade-marks
i. Distinguishing Guises
In Canada, an owner may also secure rights in trade-marks referred to as "distinguishing guises." A distinguishing guise is a trade-mark used to identify the unique shape of wares or its package/mode of wrapping. It is necessary to provide evidence of acquired distinctiveness of these types of marks as of the date that an application for registration for the distinguishing guise was filed. As a result, an application to register a distinguishing guise can only be based on use in Canada.
ii. Certification Marks
A trade-mark may also be a certification mark, which is used to identify wares and/or services of a defined standard. It is owned by one entity but licensed to others to identify wares and/or services that meet the defined requirements. The purpose of such standards is to distinguish and indicate a consistency with respect to:
• the character or quality of the wares or services,
• the working conditions under which the wares have been manufactured/produced or the services performed,
• the class of persons by whom the wares have been produced or the services performed, or
• the origin or the area within which the wares have been manufactured/produced or the services performed.
iii. Colours, Sounds, Smells, and Holographic Images
While it is possible to obtain a trade-mark registration in Canada for a colour, such registration is usually considered weak, difficult to protect, and may require the filing of affidavit evidence of acquired or secondary meaning.
The Canadian Trade-marks Office takes the position that sound, smell, and holographic images represented as trade-marks are not eligible for registration. The foregoing is based on the position that a trade-mark must be represented visually in order to be registrable. Although some applicants have attempted to assert rights primarily in the category of "sound" marks, most have as yet been unsuccessful. It is likely that the Courts may need to determine whether such marks are eligible for registration under the Act as well as the nature of any evidence or other guidelines or requirements for seeking protection of the same.
3. Does a Trade-mark Need to Be Registered?
In Canada, trade-mark rights may be acquired for both registered and unregistered trade-marks. In particular, a trade-mark does not need to be registered to benefit from the protection and rights afforded under the Act and the common law. Notwithstanding the foregoing, a trade-mark registration provides several additional benefits over and above those attached to unregistered trade-marks, including providing:
(1) exclusivity to the trade-mark across all of Canada rather than to the geographical scope of a trade-mark's reputation;
(2) the basis for filing a trade-mark in another Convention country;
(3) the basis for ground of opposition against a third party in opposition proceedings before the Trade-marks Office used to prevent a third-party trade-mark application from proceeding to registration;
(4) the basis for a trade-mark infringement action in Canada;
(5) the basis for alerting others of your rights in the context of trade-mark availability searches, as all trade-mark applications and registrations are entered on the Trade-mark Registry;
(6) the basis for determining rights in a licensing regime; and
(7) the basis for valuation of trade-marks.
[1] Trade-marks Act, R.S.C. 1985, c. T-13 ["the Act"].
[2] The most salient distinction between registered and unregistered trade-marks is that more extensive rights are afforded to an owner of a registered trade-mark.
[3] Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22 at paras. 21-22.
[4] Playboy Enterprises, Inc. v. Germain (1978), 43 C.P.R. (2d) 271 (F.C.A.).
[5] For more information related to cancellation and expungement proceedings, please see Chapter 6.
[6] Although protectable, such marks are often highly suggestive and may be more difficult to protect than a traditional trade-mark.
PROCEDURAL REQUIREMENTS
At first blush, filing a trade-mark application may be viewed as a simple, straightforward procedure. However, such a view does not reflect reality. Preparing a trade-mark application and following it through the process can be a complex task — particularly if an objection is received from the Trade-marks Office or a third party challenges the rights to the trade-mark. An appropriate strategy and careful consideration should be given to the requirements of the Trade-marks Act[1] with respect to filing an application to ensure that correct and relevant information is provided to the Trade-marks Office without unduly restricting and/or jeopardizing the trade-mark owner's rights.
A. FILING REQUIREMENTS
There are several filing requirements for trade-mark applications, including:
(1) The name and address of the applicant. The current name and address of the applicant or owner seeking protection and registration of the trade-mark must be provided. Notably, a P.O. box will not be accepted. The full name of the applicant must also be provided (inclusive of the designations Ltd., Co., etc.) or the Trade-marks Office will inquire as to whether the name provided is the full legal name of the applicant. It can be very time consuming and expensive to correct an error in the owner's name. In some instances, the Trade-marks Office may refuse to allow a correction and require the refiling of the application.
(2) The basis for filing the application must be provided (for greater detail, see section B below). However, unlike some other jurisdictions, it is not possible to amend a Canadian application that was filed based on proposed use in Canada to one that is based on use in Canada.[2]
A trade-mark is deemed to have been used in association with goods if it appears on the goods themselves or on their packaging at the time of the transfer of property or possession of the goods in the normal course of trade. This generally coincides with a sale of goods. A trade-mark will be considered to be used in association with services if the trade-mark is used or displayed in the performance or advertising of the services and if the applicant is performing the services in Canada or is prepared to do so.[3]
An application may also include a filing basis related to the registration and use of a corresponding trade-mark in a Convention country.[4] In order to rely on a foreign application or registration as a basis for registration in Canada (or for claiming priority, discussed below), the applicant must be a citizen or national of that country, must be domiciled in that country, or must have a real and effective industrial or commercial establishment in that country.
(3) A clear indication of the trade-mark must be provided. As mentioned earlier, a block letter word mark usually provides the broadest protection to the owner. Once filed, only minor changes may be made to the trade-mark prior to advertisement in the Trade-marks Journal (possibly due to a typographical error).
If the applied for trade-mark is a design mark, then a representative drawing of the mark must be provided.
(4) A list of the goods and/or services covered by the trade-mark application. Because Canada does not adhere to the international classification system, it is possible to list as many goods and/or services as needed in the application without incurring additional government fees.
(5) An official filing fee[5] required at the time of filing, or the application will not be processed.
(6) If not in English or French, a translation will be required with respect to any information and/or documents filed — for example, certified copies of trade-mark registrations. A certified copy of a priority document is not required.
(7) All applications filed by an applicant outside of Canada must include a Canadian representative for service (usually a registered trade-mark agent and/or law firm located in Canada).
(8) All applications filed in Canada must include a claim to entitlement that the applicant is entitled to use the trade-mark in Canada.
(9) An application may also include other claims to support registrability of a proposed trade-mark and can be made at the time of filing of the application or prior to advertisement of a trade-mark application in the Canadian Trade-marks Journal. For a more specific and thorough discussion of such issues, see Chapter 3.
Applications may also include a claim to priority on the basis of an earlier filed application abroad. A priority claim provides the benefit of obtaining an entitlement date in Canada based on the foreign filing date. Notably, a priority claim merely provides a means for obtaining a priority filing date — it is not an independent filing basis for the purposes of minimum filing requirements.
In order for an applicant to make a claim of priority based on an earlier filed application, a declaration setting out the date and country of filing of the earlier application must be filed within a period of six (6) months after the date on which the earliest application was filed for the registration of the same or substantially the same trade-mark for use in association with the same kind of wares or services.
Lastly, there is no requirement for specimens of use related to the wares and/or services listed in an application, a Power of Attorney, or translation if the application is filed in English or French.
B. BASIS FOR FILING APPLICATIONS IN CANADA
At the time of filing, the applicant is required to provide the basis upon which the trade-mark application is being filed and for which registration is sought. In this regard, the applicant must state which particular, or what combination, of the four filing bases below it is relying upon:
• actual use in Canada (section 16(1) of the Act);
• proposed use in Canada (section 16(3) of the Act);
• registration and use in a Convention country (section 16(2) of the Act ); and
• having made known the mark in Canada (section 16(1) of the Act).
1. Proposed Use in Canada
As indicated earlier, an application may be filed based on the applicant's "intention to use" the trade-mark in Canada. As the wording suggests, such a basis requires that the applicant has not used the trade-mark as of the date of filing the application in Canada. Unlike in some jurisdictions, including the United States, it is not possible to amend an application based on "intention to use in Canada" to "use in Canada" if such use precedes the filing date of the application.[6]
2. Use in Canada
An applicant may also file an application based on the use of the trade-mark in Canada. Section 4 of the Act defines "use" of a trade-mark in association with goods and services as follows:
The date of first use must be provided at the time of filing of the application in Canada. The date of first use may be entered as (1) a precise date, (2) a particular month of a certain year, or most broadly, (3) a specific year. If only the month and year is provided, the Trade-marks Office considers such date to be the last day of the month of that particular year. If only the year is provided the Trade-marks Office considers such date to be the last day of the last month of the year provided. Notably, it is not necessary to choose the earliest date of first use, particularly if there are no records to confirm such use because the Trade-marks Office will permit an applicant to refer to a date of first use as "since at least as early as."[7]
3. Registration and Use in a Convention Country
An application may also be based on use and registration abroad in another Convention country. It is generally considered that an applicant must confirm that it has used and filed or used and registered its trade-mark abroad as of the Canadian filing date. If there has been no use abroad at the time of filing in Canada, the Canadian application or resulting registration may be rejected or deemed invalid.[8]
4. Having Made Known the Mark in Canada
An application may also be filed based on "making known" in Canada — corresponding to the use of a trade-mark abroad but not in Canada. Under this filing basis, an applicant must demonstrate through affidavit evidence that, due to the extent of use and advertising in another country, the trade-mark has become known to Canadians as of the filing date of the application.[9]
5. Multiple Filing Bases
An applicant may assert multiple filing bases in association with both wares and services in a single application. While the applicant may not assert actual use in Canada and proposed use in Canada in association with the exact same wares and/or services, the applicant may assert actual use for some wares and/or services and proposed use for other dissimilar wares and/or services. Each filing basis will be reviewed and assessed independently to ensure that the formal requirements are met. There are no additional government fees associated with entering multiple filing bases.
C. EXAMINATION/PROSECUTION STAGE
Once a trade-mark application is filed, an Examiner at the Trade-marks Office reviews the application to ensure that the application is registrable. This stage is generally referred to as the "examination" or "prosecution" stage. There are several technical and substantive objections that may be cited by the Trade-marks Office with respect to the registration of a particular trade-mark application.
The technical requirements to be met for a new application have been provided above under the title "Filing Requirements." Substantive objections to the registrability of the subject application can include whether the trade-mark
(1) is the name or surname of a living individual (section 12(1)(a));
(2) is clearly descriptive or deceptively misdescriptive in English or French of a character or quality of the goods and/or services (section 12(1)(b));
(3) is the name of the goods or services in any language (section 12(1)(c));
(4) can be confused with a prior application or registration of record (section 12(1)(d)); and
(5) can be confused with a prohibitive mark under sections 9 and 10 (section 12(1)(e)); and
(6) is considered a geographical indication of origin (sections 11.14 and 11.15).
A more thorough discussion of each of the noted substantive objections can be found in Chapter 3 of this book.
D. APPROVAL
If there are no objections issued by the Trade-marks Office or once a response to any technical or substantive objection(s) have been submitted by the applicant and accepted by the Trade-marks Office, the application will be approved for advertisement in the Canadian Trade-marks Journal. To document the foregoing, an Approval Notice for the relevant application is issued to the applicant.
The Approval Notice may also refer to a mark(s) that has been deemed as "associated" with the approved trade-mark. Trade-marks are "associated" if the applicant is the owner of other marks with which the mark being applied for could otherwise be confused.[10]
E. ADVERTISEMENT
The Canadian Trade-marks Journal is published weekly and is available for public review every Wednesday. Any interested person has two (2) months from the date on which a trade-mark application is advertised to oppose the application by initiating an opposition proceeding or to request an extension of time within which to do so. It is possible to request a retroactive extension of time to oppose if there are sufficient exceptional circumstances to warrant such an extension.
F. OPPOSITION
In Canada, opposition proceedings are considered by an administrative tribunal — the Trade-marks Opposition Board. Notably, opposition proceedings constitute a method to determine rights to the registration of a particular trade-mark application and not to determine rights in the Canadian marketplace related to the use of a trade-mark. Separate legal proceedings must be undertaken to determine any infringement or passing-off issues.
Opposition proceedings are adversarial and include the following stages:
(1) the filing of a Statement of Opposition by an opponent;
(2) the filing of a Counterstatement by the applicant;
(3) the filing of the Opponent's affidavit evidence, which is optional (and any cross-examination(s) of the affiant(s));
(4) the filing of the applicant's affidavit evidence (and any cross-examination(s) of the affiant(s));
(5) the filing of the Opponent's reply evidence, which is optional (and any cross-examination(s) of the affiant(s));
(6) the filing of the Written Arguments of both parties (the filing of a Written Argument is optional). If filed, the Written Argument is forwarded to the Trade-marks Office in duplicate and remains sealed until both parties' submissions are available;
(7) the attendance (optional) of each party at an Oral Hearing; and
(8) the appealing (optional) of the decision of the Trade-marks Opposition Board by the relevant parties.
Although Canadian opposition proceedings can take a minimum of two or three years to complete, there are extensions available to the parties if sufficient reasons and/or consent is provided. The proceedings can be a complex, lengthy, and expensive process, but are usually not as lengthy or expensive as a US opposition. There are no costs assessed at the Opposition Board level nor damages awarded.
An in-depth review of opposition proceedings is included in Chapter 5.
G. ALLOWANCE
If no opposition is filed or the Trade-marks Opposition Board has rendered a decision in an opposition proceeding in favour of the applicant that is not appealed, the trade-mark application will be allowed and a Notice of Allowance will be issued to the applicant. The Notice of Allowance may include a request to file a Declaration of Use (if the application includes the "intention to use" in Canada filing basis), and/or the filing of the final registration fee. Specimens are not required to be filed in association with a Declaration of Use. Once the Notice of Allowance issues, it is no longer possible to oppose the application.[11]
H. REGISTRATION AND RENEWAL
The final stage of an application is the issuance of a Certificate of Registration. In order to obtain a Certificate of Registration, a registration fee[12] is required to be paid. The renewal period for a registration is 15 years from the date of registration. A registration may be renewed indefinitely for subsequent 15-year periods (assuming that the trade-mark remains in use in Canada). Unlike other jurisdictions, specimens and/or Declarations of Use are not required to be filed periodically after registration. Registration is renewed by way of a request to the Trade-marks Office and the payment of the appropriate renewal fee.[13]
I. POST-REGISTRATION ISSUES
1. Registration Information
Once registered, it is important to ensure that information is provided to the Trade-marks Office concerning any changes to:
(1) the ownership of the registration,
(2) the address of the owner listed in the registration,
(3) the wares or services listed in the registration, and/or
(4) the trade-mark itself.
If the ownership and address listed in the registration is not updated on a timely basis, important notices related to renewal deadlines, summary cancellation notices, legal proceedings, etc. that affect the trade-mark registration may not be received by the owner.
Furthermore, any changes to the list of goods and/or services or to the actual trade-mark could also allow the registration to be subject to cancellation. The foregoing changes may require the filing of a new trade-mark application to ensure that the owner's rights continue to be protected. If not undertaken at the relevant time, significant time and costs may be incurred to evidence such rights.
2. Trade-mark Enforcement/Litigation
A trade-mark owner also has the right to enforce or defend its trade-mark in federal or provincial court in the context of infringement actions, passing-off actions, or other related legal proceedings. A discussion of the various proceedings related to trade-marks initiated in Canadian courts is included in Chapter 7.
J. DOMAIN NAMES/INTERNET
The rapid development and commercial significance of the Internet has created many unique issues in relation to intellectual property rights. Issues involving jurisdiction, domain names, and the use of trade-marks on Web pages represent just some of the novel problems that can be encountered in the ever-changing world of cyberspace. Chapter 9 of this book provides an overview of trade-marks as related to the Internet.
[1] Trade-marks Act, R.S.C. 1985, c. T-13 ["the Act"].
[2] Trade-marks Regulations, SOR/96-195, s. 32.
[3] See Trade-marks Act, supra note 1, s. 4.
[4] Ibid., s. 34.
[5] Currently, the official filing fee is $250.00 (CAD).
[6] Trade-marks Regulations, supra note 2, s. 31.
[7] Marineland Inc. v. Marine Wonderland & Animal Park Ltd. (1974), 16 C.P.R. (2d) 97 (F.C.T.D.).
[8] Allergan Inc. v. Lancôme Parfums & Beauté & Cie, société en nom, collectif (2007), 64 C.P.R. (4th) 147 (T.M.O.B.).
[9] Trade-marks Act, supra note 1, s. 5.
[10] Trade-marks Act, supra note 1, s. 15.
[11] Trade-marks Act, supra note 1, s. 39.
[12] Currently, the registration fee is $200.00 (CAD).
[13] Currently, the renewal fee is $400.00 (CAD).
SPECIFIC REQUIREMENTS FOR CANADA
A. FILING BASIS OF A TRADE-MARK APPLICATION
As briefly noted in Chapter 2, the Trade-marks Act[1] sets out the information that must form part of the contents of any trade-mark application under section 30. In order to obtain a filing date, one of the minimum requirements is to indicate the filing basis of the trade-mark application. As indicated previously, an application may be based upon any of the following:
• use in Canada,
• proposed use in Canada,
• use and application/registration in a country of the Union.
• making known.
An application can also be based on a combination of these filing bases, each of which will be reviewed independently, on its own merits.
1. Use in Canada
a. Determination of the Date of First Use
In order to register a trade-mark on the basis that it has been "used" in Canada per sections 16(1) and 30(b) of the Act, the applicant must provide a date of first use of the mark in Canada.
The Act does not require the applicant to indicate the actual date of first use of the mark, and an applicant who has used its mark prior to filing may "out of a super abundance of caution"[2] claim any date subsequent to the actual date of first use. The applicant can indicate either the exact day, month, and year on which such use began, a specific month and year, or only a year. It is important to note that when indicating only the month and year, the use will be deemed to have commenced on the last day of that month, and when indicating only a year, the use will be deemed to have commenced on December 31, the last day of that year. This date is important, because it will be regarded as the "effective date" for the purpose of determining entitlement in cases of alleged confusion with third-party trade-marks. For obvious reasons, the applicant should look for the earliest date of use possible as prior use.
Section 30(b) of the Act specifies that the date of first use is required only with respect to each general class of wares or services described in the application and, therefore, is not required for each specific ware or service within a general class.
Furthermore, the applicant must provide, in accordance with section 30(i) of the Act, a statement to the effect that it is satisfied that it is entitled to use the mark in association with the wares and services described in the application.
b. Use in Accordance with Section 4
Use of a trade-mark in Canada can be established by the applicant itself, by a licensee, or by a named predecessor in title. The concept of "use" is core to the notion of trade-marks because trade-mark rights may be acquired through use. Section 2 of the Act defines "use" in relation to a trade-mark as meaning "any use that by section 4 is deemed to be a use in association with wares or services."
To assess whether the trade-mark is effectively in use in association with wares or services, we must therefore refer to section 4 of the Act. Section 4(1) of the Act sets out the following:
(1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or in possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person whom the property or possession is transferred.
For use to occur "in association with" wares, there must be a sale — that is, a transfer of possession in Canada in the normal course of trade. Also, in order to comply with section 4(1) of the Act, the trade-mark must be marked on the wares themselves or on the packaging, or must be so associated with the wares at the time of transfer that notice of the association is given. It has been established by the courts that use of a trade-mark in general advertising and promotional material in Canada is usually not considered "use of the mark in association with wares." However, advertising at the point of sale may constitute use at the time of transfer of the wares if the advertising is sufficiently close in proximity to the wares on display for sale.[3]
The concept of "transfer in the normal course of trade" is not defined in the Act. The jurisprudence has held that a trade-mark does not need to be used along the entire chain of distribution ending with an ultimate consumer.[4] The "normal course of trade" includes use by intermediaries such as in the context of a sale from the manufacturer to the distributor or from the distributor to a retailer.
Also, if a trade-mark is affixed on wares or on their packaging in Canada, when the wares are exported from Canada, the trade-mark is deemed to be used in Canada in association with those wares.[5]
With respect to services, section 4(2) of the Act states that:
(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
Contrary to the definition of "use in association with wares," the use of a trade-mark in the context of advertising a service may constitute use of that mark as long as the service is also available in Canada. It may be sufficient that the applicant is offering and is prepared to offer the services in Canada;[6] however, displaying a trade-mark in the pre-launch advertising of a service that is not yet available in Canada does not constitute use of the mark.[7] Similarly, advertising the trade-mark in association with services in publications that circulate within Canada, without the service actually being available in Canada, does not constitute use of the mark in Canada.[8]
c. Predecessor in Title
If the applicant acquired a trade-mark from a third party, it can nonetheless benefit from the use by its predecessor in title provided the applicant can establish continuous use of the mark and a clear chain of title. To establish and rely on the use by a predecessor in title from the date of first use that is claimed in the application, the applicant must submit the name of all its predecessors in title, along with a statement that each named predecessor in title used the trade-mark in connection with each of the general classes of wares or services listed in the application. The failure to identify a predecessor in title from the claimed date of first use can invalidate the application, because it constitutes a violation of section 30 of the Act.[9]
d. Use by Licensee
In a situation where the applicant itself does not use the trade-mark in Canada, but has granted a licence to a third party in compliance with the requirements of section 50 of the Act, the use by this licensee will enure to the benefit of the applicant. The applicant can therefore rely on the use of the trade-mark of its licensees in Canada in support of the claimed date of first use.
2. Proposed Use
Pursuant to sections 30(e), 16(3), and 42(2) of the Act, an applicant may file an application for a trade-mark that has not yet been used in Canada in order to secure a filing date that will be considered the date of entitlement of the trade-mark against conflicting marks that could subsequently be filed or used in Canada. However, such trade-mark rights will only be acquired where use of the mark ensues. Indeed, the registration will issue only after the applicant has filed a Declaration of Use indicating that the trade-mark is in use in Canada in association with each of the wares and services specified in the application.
An application based on proposed use must include 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."[10] Therefore, if the applicant intends to use the mark itself rather than through a licensee, it must state its intention at the time of filing of the application. Alternatively, if the applicant does not intend to use the mark itself, and instead only through a licensee, it must also indicate this when filing its application.
a. Possible Prior Use
It is important to note that an application based on proposed use can be refused for non-compliance with section 30 of the Act if the applicant has actually used its trade-mark in Canada prior to the date of filing.[11] Should it be established in opposition proceedings against an application based on proposed use only, that the trade-mark was used prior to its filing date, the Registrar will refuse the application on the basis that the statement made by the applicant in accordance with section 30 of the Act is false.
b. Declaration of Use
Once an application based on proposed use is allowed for registration, section 40(3) of the Act requires the applicant to file a Declaration of Use within six months of the date set out in the Notice of Allowance, or within three years of the filing date of the application in Canada, whichever is the later date.
The Declaration of Use must include a statement to the effect that the applicant, the applicant's successor in title, or a licensee has commenced use of the trade-mark in association with the wares and services in Canada that are specified in the application.[12] An applicant can choose to file a complete or partial Declaration of Use. If there has been use of the trade-mark in association with all the wares and services specified in the application, not only with certain of the wares or services contained in a general class, a complete Declaration of Use can be filed and the certificate of registration will cover all of the specified wares and services. In the event that the trade-mark is in use with certain of the wares and services only, and that it will not be used with the remaining wares or services, an applicant can file a partial Declaration of Use with respect to those wares and services in association with which the mark is used, and the certificate of registration will be limited to those wares or services. The remaining wares and services will be presumed to have been deleted from the application.
If the trade-mark is not yet in use in association with all of the wares and services specified in the application by the deadline indicated in the Notice of Allowance for the filing of the declaration, the applicant can request an extension of time to file the Declaration of Use. The request must identify the grounds for granting an extension of time and must be accompanied by the payment of the prescribed government fee. The Registrar currently grants extensions of time of six months. Extensions of time of one year can also be granted upon request when an applicant is awaiting approval for a product from a government department.[13] However, in the event that more than three years have passed since the initial deadline to file the Declaration of Use provided in the Notice of Allowance, the Registrar will require "significant substantive reasons which clearly justify a further extension of time"[14] to substantiate any requests that are evaluated on a case-by-case basis. If no Declaration of Use or no request for an extension of time to file a Declaration of Use is filed within the prescribed period, the application will be deemed abandoned.
3. Application/Registration and Use Abroad
In accordance with section 16(2) of the Act, an applicant that has duly registered a trade-mark in or for its country of origin and that has used the trade-mark in association with wares or services in a country of the Union is entitled to secure the registration of said trade-mark in Canada in respect of the same wares and services in association with which it is registered in that country of origin and has been used in a country of the Union.
An applicant can also rely on an application filed in its country of origin; however, the corresponding Canadian application will only be approved and proceed to advertisement once the foreign registration is issued and a certified copy of the foreign registration is submitted along with the prescribed government fee and/or translation if not in English or French.
As per section 2 of the Trade-marks Act, "country of origin" means (a) the country of the Union in which the applicant for registration of a trade-mark had at the date of the application a real and effective industrial or commercial establishment, or (b) the country of the Union where he on that date had his domicile, or (c) the country of the Union of which he was on that date a citizen or national.
The use and registration abroad filing basis permits an applicant to obtain registration of that trade-mark in Canada without having to establish use in Canada, thus eliminating the need to file a Declaration of Use. It also allows an applicant to obtain registration of a trade-mark in Canada that would normally be refused under sections 12(1)(a) and 12(1)(b) of the Act, provided that the trade-mark is not without distinctive character, as per section 14 of the Act.
The following conditions must be respected in order to assert a use and registration abroad filing basis pursuant to section 16(2) of the Act:
• at the time of filing of the Canadian application, the applicant must be the owner of an application or a registration that subsists[15] and is valid in its country of origin, which must be a country of the Union;
• the name of the country of the Union where the trade-mark has been used in association with the listed wares or services must be indicated in the Canadian application;
• the details of the corresponding foreign application/registration must be provided; and
• before approval, a certified copy of the certificate of the corresponding foreign registration must be filed along with the prescribed government fee and/or any relevant translation.
It is not necessary to assert the filing basis of use and registration abroad at the time the corresponding Canadian application is filed. This filing basis can be added at any point prior to advertisement of the application in the Trade-marks Journal, in accordance with section 32 of the Trade-marks Regulations.[16] There is also no requirement to file evidence of use of the trade-mark in a country of the Union when filing the corresponding Canadian application. However, it is important to note that the use of the applied-for trade-mark must have already occurred at the time of filing the Canadian application, either in the country of origin or another country of the Union.[17] In a decision of the Opposition Board, Allergan Inc. v. Lancôme Parfums & Beauté & Cie, société en nom collectif,[18] the Canadian trade-mark application, which was filed based on use and registration in France, was refused on the grounds that the applicant had not established use of the trade-mark in its country of origin at the time the Canadian application was filed.
For the use and registration abroad filing basis to be valid, the "foreign registration of the trade-mark must exist at least until the date upon which registration is granted in Canada."[19]
4. Making Known
In the case of a trade-mark that is not in use in Canada, sections 5, 16(1), and 30(c) of the Act allow an application to be based on the trade-mark having been "made known" in Canada. In order to file an application on the basis of making known in Canada, the application must contain the following information: (a) the name of a country of the Union in which the trade-mark has been used by the applicant and (b) the date and the manner in which the applicant has made it known in Canada in association with the wares and services.[20]
For a trade-mark to be "deemed" to be made known in Canada, section 5 of the Act stipulates three conditions:
A trade-mark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with wares or services, and
(a) the wares are distributed in association with it in Canada, or
(b) the wares or services are advertised in association with it in
(i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the wares and services,
(ii) radio broadcasts ordinarily received in Canada by potential dealers in or users of the wares and services,
and it has become well known in Canada by reason of the distribution or advertising.
Therefore, the trade-mark must be used by the applicant in a country of the Union, the wares and services must be distributed or advertised in Canada, and the trade-mark must be well known in Canada.
The Valle's Steak House v. Tessier[21] decision clarified that for a trade-mark to be considered well-known in Canada, it is not necessary that it be well-known across the entire country, as long as it is well known in a substantial part of Canada.
B. AMENDMENT OF THE FILING BASIS OF THE APPLICATION
The Regulations allow an applicant to add, delete, or modify some of the filing bases prior to advertisement of the application in the Trade-marks Journal under certain conditions, while other amendments are prohibited once the application is filed.
1. Amendment to the Date of First Use or Making Known
Section 31(c) of the Regulations stipulates that "no application for the registration of a trade-mark may be amended where the amendment would change the date of first use or making known in Canada of the trade-mark to an earlier date, except where the evidence proves that the change is justified by the facts."
Despite the general rule prohibiting an amendment that asserts an earlier date, the applicant may request such a change by submitting evidence in the form of an affidavit or a statutory declaration to justify the amendment. The change of date to an earlier date will only be allowed if the Registrar finds that there is sufficient evidence.
It is, however, possible, before the application is advertised in the Trade-marks Journal, to change the date of first use or making known in Canada for a date that is subsequent to the claimed date of first use.
Once the application has been advertised, it is no longer possible to change the date of first use or making known,[22] unless the applicant can prove that there was a clerical error by the Trade-marks Office.[23]
2. Amendment from Actual Use or Made Known to Proposed Use
Section 31(d) of the Regulations does not prohibit, prior to advertisement of the application in the Trade-marks Journal, an applicant from changing its trade-mark application based on actual use or making known in Canada to one based on proposed use instead. The reason for allowing such an amendment is that it does not introduce an earlier date of entitlement. Thus, the applicant's date of entitlement becomes the filing date of the application, which is subsequent to the date of first use or the date of making known in Canada.
However, once the application has been advertised, it is no longer possible to change an application from one alleging use or making known to one based on the proposed use of the trade-mark.[24]
3. Amendment from Proposed Use to Use
Section 31(d) of the Regulations prohibits, at any time after filing, the change from an application based on proposed use to one based on use or making known in Canada.
If an applicant notices, after the filing of its application, that the trade-mark has been in use in Canada prior to the filing date, then its only option is to file a new application on the correct basis, along with the prescribed filing fee. If the basis is challenged during opposition proceedings, the application may be found to be invalid.
4. Amendment of an Application Based on Application/Registration and Use Abroad
An applicant is only prohibited from adding the basis of use and registration abroad to its application after it has been advertised in the Trade-marks Journal. At any time before advertisement, the applicant can add this basis as long as the foreign application/registration existed at the time of filing of the Canadian application, and that use had occurred in a country of the Union prior to or at the filing date in Canada.
A use and registration abroad basis can also be removed at any time prior to the registration of the mark.
5. Multiple Bases
For applications filed with two or more bases, it is possible for an applicant to delete some of the bases prior to registration. Therefore, for an application based on proposed use in Canada, as well as use and registration abroad, the applicant may wish to consider deletion of the proposed use basis and to obtain the registration based on use and registration abroad (if the foreign registration covers the same wares and services). The approach outlined above forgoes the need to await use of the trade-mark in Canada and the filing of a Declaration of Use.
C. PRIORITY CLAIM
It is important to note that a priority claim is not a filing basis, but merely a claim to obtain an earlier date of entitlement based on the prior filing of a foreign application. As mentioned above, the filing date of an application is determined by the application filing bases — namely, use in Canada, proposed use in Canada, use and application/registration in a country of the Union, or making known.
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