Trademarks

The primary statutory sources of trademark rights in Canada are:

• the Trademarks Act (RSC, 1985, c T-13); and
• the corresponding Trademark Regulations (SOR/2018-227).

Protection for trademarks can also be provided under common law.

Registration of a trademark grants the trademark owner the sole right to use the trademark across Canada. The trademark term in Canada is 10 years and a trademark can be renewed every 10 years. A registered trademark must be continuously used in Canada or risks being expunged from the Trademarks Register. Registration of a trademark:

• provides a presumption of validity; and
• allows for broader protection against infringement and depreciation of goodwill.

The scope of protection granted to registered trademarks is throughout Canada.

Trademark rights can still arise in an unregistered trademark through use. Unregistered trademarks may be protected through the common law action for ‘passing off’, which is codified in Section 7 of the Trademarks Act. The scope of protection granted to unregistered trademarks is limited to the geographical area in which the unregistered trademark is used.

The common law action for passing off requires:

• a protectable reputation or the existence of goodwill on the part of the unregistered trademark owner;
• deception of the public due to misrepresentation; and
• actual or likely damage to the unregistered trademark owner

See question 1.1.

As per Section 2 of the Trademarks Act, a ‘trademark’ is a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish its goods or services from those of others.

Canadian trademark law also provides for the protection of a certification mark, which is a sign or combination of signs that is used or proposed to be used for the purpose of distinguishing, or so as to distinguish, goods or services that are of a defined standard from those that are not, with respect to:

• the character or quality of the goods or services;
• the working conditions under which the goods are produced or the services performed;
• the class of persons by whom the goods are produced or the services performed; or
• the area within which the goods are produced or the services performed.

Additionally, Canadian trademark law provides for the protection of prohibited marks. No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, the items listed in Section 9 of the act – including any badge, crest, emblem or mark adopted and used by any public authority in Canada – as an official mark.

Finally, Canadian trademark law provides for the protection of a geographical indication, which identifies a wine or spirit, or an agricultural product or food category set out in the schedule to the act, as originating in a territory if a certain quality, reputation or other characteristic is attributable to its geographical origin.

To function as a trademark, a mark must be used by a person for the purpose of distinguishing its goods or services from those of others.

As per Section 12(1) of the Trademarks Act, a trademark is registrable if it is not:

• a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding 30 years;
• whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of:
• • the goods or services in association with which it is used or proposed to be used; or
  • the conditions of or the persons employed in their production or of their place of origin;
• the name in any language of any of the goods or services in connection with which it is used or proposed to be used;
• confusing with a registered trademark;
• a sign or combination of signs whose adoption is prohibited by Section 9 or 10 of the act;
• in whole or in part, a protected geographical indication identifying a wine, spirit, agricultural product or food, where the trademark is to be registered in association with a wine, spirit, agricultural product or food not originating in a territory indicated by the geographical indication; or
• subject to Sections 3(3) and 3(4)(a) of the Olympic and Paralympic Marks Act, a mark whose adoption is prohibited by Section 3(1) of that act.

See question 2.1.

Non-traditional trademarks – including but not limited to three-dimensional shapes, modes of packaging goods, sounds, scents, tastes and textures – and any trademark which, as per the Registrar’s preliminary view, is not inherently distinctive may be eligible to function as a trademark if, on request by the Registrar, the applicant provides sufficient evidence that the trademark is distinctive at the filing date of the application for its registration.

Additionally, as per Section 12(2) of the Trademarks Act, a trademark is not registrable if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function.

The Office of the Registrar of Trademarks at the Canadian Intellectual Property Office (CIPO) controls the trademark registration process.

The 2024 fees for an application for registration of a trademark – assuming that the application and the fee are submitted online through the CIPO website – is:

• C$458 for the first class of goods or services to which the application relates; and
• C$139 for each additional class of goods or services to which the application relates as of the filing date.

If the application and the fee are submitted through any other means, the fees for an application are:

• C$597 for the first class of goods or services to which the application relates; and
• C$139 for each additional class of goods or services.

The registration of a trademark in respect of an application with a filing date before 17 June 2019 has a registration fee of C$277. Official fees are adjusted annually pursuant to the Service Fees Act (S.C. 2017, c. 20, s. 451).

Yes, the Office of the Registrar of Trademarks uses the Nice Classification scheme. Any trademark applications registered prior to the adoption of the Nice Classification scheme by the Office of the Registrar of Trademarks must have grouped goods and services according to the Nice Classification on renewal.

‘Class-wide’ applications are not allowed. Applicants:

• must identify the specific goods or services for which the mark will be used; and
• may use CIPO’s Goods and Services Manual for guidance (although this is not comprehensive).

Yes, an applicant must have a bona fide intention to use the trademark for the goods or services identified in the application. A statement of use is not required to register a trademark application; however, if a trademark is not used for three consecutive years, the trademark risks being expunged through a Section 45 non-use proceeding initiated by a third party.

Yes, the Office of the Registrar of Trademarks will conduct a search of the Trademarks Register for prior-filed pending applications or registrations which are identical or confusingly similar to the trademark application under review.

The Office of the Registrar of Trademarks also examines trademark applications to ensure that they are not:

• whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of:
• • the goods or services in association with which they are used or proposed to be used; or
  • the conditions of or the persons employed in their production or of their place of origin;
• a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding 30 years;
• lacking distinctiveness;
• a trademark which consists of, or so nearly resembles as to be likely to be mistaken for, a prohibited mark as defined in Section 9(1) of the Trademarks Act;
• denominations that are used to designate a plant variety as per Section 10.1 of the act; or
• protected geographical indications for wines, spirits, agricultural products or food.

Additionally, the Office of the Registrar of Trademarks examines trademark applications to ensure that the goods and/or services listed in the trademark are in ordinary commercial terms, and that the statement of goods or services is described in a manner that identifies a specific good or service.

See question 3.7.

No, the Office of the Registrar of Trademarks does not have a supplemental register on which descriptive marks may be registered. If a trademark application is refused on the grounds that the mark is descriptive or not inherently distinctive, the applicant may submit evidence of acquired distinctiveness as of the filing date of the application to overcome the refusal.

A third party may submit a written communication to the Office of the Registrar of Trademarks on pending applications notifying the Registrar of their prior trademark rights. Notifications of third-party rights allow third parties to bring to the attention of the registrar information that may be relevant relating to the registrability of a pending trademark application; however, it does not create an inter partes proceeding between the applicant and the third party. Notifications of third-party rights are limited to the following grounds:

• The trademark is confusing with a registered trademark under Section 12(1)(d) of the Trademarks Act;
• The applicant is not the person entitled to registration of the trademark in view of Section 37(1)(c) of the act; or
• A registered trademark is being used in the application to describe goods or services

A statement of use is not required to obtain a trademark registration. However, if a trademark is not used for three consecutive years, it risks being expunged through a Section 45 non-use proceeding initiated by a third party.

There are three potential timelines for trademark applications to reach examination in Canada: (a) accelerated, regular, and expedited. The Trademarks Office publishes and updates Client Service Standards which, as of the date of publication of this article, indicate the following timeframes:

• Accelerated timeline: A trademark application which uses the Pre-approved List of Goods and Services typically takes 18 months to reach examination.
• Regular timeline: A trademark application which does not use the Pre-approved List of Goods and Services currently takes 28 months to reach examination.
• Expedited timeline: A request for expedited examination may be made in relation to a trademark application if any of the following criteria are met:
• • A court action is expected or underway in Canada with respect to the applicant’s trademark in association with the goods or services listed in the application;
  • The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant’s trademark in association with the goods or services listed in the application;
  • The applicant requires registration of its trademark in order to protect its IP rights from being severely disadvantaged on online marketplaces; or
  • The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign IP office. In such cases the request will need to be attached to the affidavit or statutory declaration.
• A trademark application which is cleared for expedited examination typically reaches examination within two to four months of receiving confirmation from CIPO that the trademark application has been accelerated (see the CIPO practice notice entitled “Requests for Expedited Examination” for further information).

Assuming that no examination reports are issued, the timeline from filing an application to publication is generally similar to the regular, accelerated and expedited timeframes set out in question 3.12.

Where a response to an examination report is submitted, and assuming that such response overcomes the refusals listed, a regular trademark application (not accelerated or expedited) currently takes over 42 to 48 months to reach publication.

Section 56(1) of the Trademarks Act states that a decision of the Registrar can be appealed to the Federal Court within:

• two months of the date on which notice of the decision was dispatched by the Registrar; or
• such further time as the court may allow, either before or after the expiration of the two months.

As per Section 44.1(4) of the Trademarks Act, any question arising as to the class within which any goods or services are to be grouped will be determined by the Registrar, whose determination is not subject to appeal.

An appeal is made by way of notice of appeal filed with the Registrar and in the Federal Court.

Additionally, the appellant must send a copy of the notice of appeal by registered mail to:

• the registered owner of any trademark that has been referred to by the Registrar in the decision; and
• every other person that was entitled to notice of the decision.

The Federal Court judgment can be appealed to the Federal Court of Appeal. The Federal Court of Appeal’s judgment is considered to be the final judgment given in the appeal unless the decision is appealed to the Supreme Court of Canada.

Yes, a third party can oppose a trademark application.

Any person may oppose a trademark application on any of the following grounds (Section 38 of the Trademarks Act):

• The application does not conform to the requirements of Section 30(2) of the act, without taking into account whether it meets the requirement in Section 30(3) of the act;
• The application was filed in bad faith;
• The trademark is not registrable;
• The applicant is not the person entitled to registration of the trademark;
• The trademark is not distinctive
• At the filing date of the application in Canada, determined without taking into account Section 34(1) of the act, the applicant was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application; or
• At the filing date of the application in Canada, determined without taking into account Section 34(1) of the act, the applicant was not entitled to use the trademark in Canada in association with those goods or services.

A statement of opposition or a request for an extension of time to file a statement of opposition must be filed within two months of advertisement of the trademark application in the Trademarks Journal.

The Trademarks Opposition Board.

Once a trademark application has been advertised in the Trademarks Journal, any party may file a statement of opposition or request a two-month benchmark extension of time to file a statement of opposition within two months of advertisement of the trademark application in the Trademarks Journal. The Registrar must:

• determine whether the statement of opposition raises a substantial issue; and
• ensure that all grounds are properly pleaded.

A counterstatement must then be filed within two months of the date on which the Registrar forwards the statement of opposition to the applicant. A one-month benchmark extension of time to file a counterstatement is available to the applicant.

Following this, the opponent has four months from the effective date of service of the counterstatement to file its evidence or a statement that it will not be submitting evidence. A two-month extension of time is available to file the opponent’s evidence with the applicant’s consent.

Similarly, the applicant has four months from the effective date of service of the opponent’s evidence or statement that the opponent will not be submitting evidence to file the applicant’s evidence or a statement that the applicant will not be submitting evidence. A two-month extension of time is available to file the applicant’s evidence with the opponent’s consent.

Following the above, the parties have the option to cross-examine the other party’s evidence, submit written representations and request a hearing, details of which can be found in the Canadian Intellectual Property Office practice note entitled “Practice in Trademark Opposition Proceedings”.

The decision of the Registrar may be appealed to the Federal Court as per Section 56 of the Trademarks Act within two months of the date on which notice of the decision is dispatched by the Registrar.

Trademark rights can arise in an unregistered trademark through use. Unregistered trademarks may be protected through the common law action for passing off, codified in Section 7 of the Trademarks Act. The scope of protection granted to unregistered trademarks is limited to the geographical area in which the unregistered trademark is used.

The common law action for passing off requires:

• a protectable reputation or the existence of goodwill on the part of the unregistered trademark owner;
• deception of the public due to misrepresentation; and
• actual or likely damage to the unregistered trademark owner

Registration of a trademark grants a trademark owner the sole right to use the trademark across Canada. The trademark term in Canada is 10 years and a trademark can be renewed every 10 years. A registered trademark must be continuously used in Canada or risks being expunged from the Trademarks Register. Registration of a trademark:

• provides a presumption of validity; and
• allows for broader protection against infringement and depreciation of goodwill.

The scope of protection granted to registered trademarks is throughout Canada.

No, there is no separate register for descriptive trademarks in Canada. However, a descriptive trademark may be eligible to function as a trademark if the applicant provides sufficient evidence that the trademark is distinctive at the filing date of the trademark application.

An action in trademark infringement can be brought pursuant to:

• Section 19 of the Trademarks Act, which allows the registered owner of a trademark to prevent the unauthorised use of an identical trademark with respect to identical goods and services; or
• Section 20 of the act, which allows a registered owner of a trademark to prevent others from using trademarks or trade names that are confusing with the registered trademark.

Remedies available against trademark infringement can include:

• injunctions;
• recovery of damages or profits;
• punitive damages; and
• destruction or other disposition of:
• • any offending goods, packaging, labels and advertising material; and
  • any equipment used to produce the goods, packaging labels or advertising material.

Section 22 of the Trademarks Act states that no person shall use a trademark in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto. If a court is satisfied that anything has been done contrary to the Trademarks Act, it may make any order that it considers appropriate in the circumstances, including those noted in question 7.1 (Section 53.2(1)).

Section 7 of the Trademarks Act provides that no person shall:

• make a false or misleading statement tending to discredit the business, goods or services of a competitor;
• direct public attention to its goods, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time it commenced so to direct attention to them, between its goods, services or business and the goods, services or business of another;
• pass off other goods or services as and for those ordered or requested; or
• make use, in association with goods or services, of any description that is false in a material respect and likely to mislead the public as to:
• • the character, quality, quantity or composition of the goods or services;
  • the geographical origin of the goods or services; or
  • the mode of manufacture, production or performance of the goods or services.

A party may pursue claims for trademark infringement before:

• the Federal Court; or
• the provincial superior courts.

The typical defences available to a defendant in trademark litigation include attempting to invalidate the registered rights of the plaintiff’s trademark (see question 8.3 for the grounds to invalidate a registered trademark). A defendant will also typically argue that the plaintiff’s trademark and the defendant’s trademark are not confusingly similar.

Federal Court decisions can be appealed to the Federal Court of Appeal. Where an action was brought before a provincial superior court, the decision can be appealed to the relevant provincial court of appeal. An appeal to the Supreme Court of Canada may be permitted if the Supreme Court grants leave.

The length of the initial term of registration is 10 years, as is the length of subsequent renewal terms.

Given that the renewal term prior to the June 17, 2019 changes to the Trademark Act was previously 15 years, any trademark that was due for renewal and renewed prior to June 17, 2019 is still valid for a 15 year term – the term for renewal will become 10 years as of the next renewal.

A renewal fee must be paid every 10 years and is dependent on the number of classes of goods or services being renewed. If the trademark registered prior to adoption of the Nice Classification and the goods and/or services are not yet classified, they must be classified at renewal or after receiving a notice from the Office of the Registrar of Trademarks (which is sent following the renewal with one class fee paid). The renewal fee must be submitted:

• no earlier than six months before the expiry of the initial period or renewal period; and
• no later than:
• • six months after the expiry of the initial period or renewal period; or
  • if later, two months after a renewal notice.

Where the goods and/or services are not yet classified, the timeframe for submission of a portion of the renewal fee may be longer.

The registration of a trademark is invalid if:

• the trademark was not registrable at the date of registration;
• the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;
• the trademark has been abandoned;
• the applicant for registration was not the person entitled to secure the registration; or
• the application for registration was filed in bad faith (Section 18(1) of the Trademarks Act).

Additionally, as per Section 18.1 of the Trademarks Act, the registration of a trademark may be expunged by the Federal Court on the application of any person interested if the court decides that the registration is likely to unreasonably limit the development of any art or industry.

Once three years have elapsed since the date of the trademark registration, the Registrar shall, at the written request of any person that pays the prescribed fee or on his own initiative, require the registered owner of the trademark registration to furnish within three months an affidavit or a statutory declaration showing use of the goods and/or services in Canada at any time during the three-year period immediately preceding the date of the notice. If there is no use in this three-year timeframe, the registered owner must specify:

• the date on which the trademark was last so in use; and
• the reason for the absence of such use since that date.

If the trademark is not used within the three-year timeframe and the absence of use is not due to special circumstances, the registration of the trademark will be expunged (or the portion of goods and/or services to which the non-use proceeding relates will be removed from the registration).

A third party may seek cancellation of a trademark registration through a Section 45 non-use proceeding (as explained in question 8.4) by written request to the Office of the Registrar of Trademarks, including payment of the prescribed fee.

Cancellation of a trademark registration for any of the grounds listed in the response to question 8.3 must be brought before the Federal Court.

A decision of the Registrar relating to a Section 45 non-use proceeding can be appealed to the Federal Court:

• within two months of the date on which notice of the decision was dispatched by the Registrar; or
• within such further time as the court may allow, either before or after the expiration of the two months.

The licensor must have direct or indirect control of the character or quality of the goods or services. For the purpose of controlling the character and quality of the goods and/or services, the licensor may require that the licensee provide, during the term of the licence agreement, a reasonable number of physical specimens of the trademarks as used in association with the goods and/or services. Additionally, the licensor may reserve the right to attend during normal business hours the premises of the licensee where the goods and/or services are offered, manufactured, advertised and/or sold.

A trademark licence need not be recorded with the Office of the Registrar of Trademarks.

A licensor can lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control.

An action for passing off (see question 1.2) may be brought in relation to a foreign trademark if the trademark owner has a protectable reputation or the existence of goodwill in Canada.

A request for territorial extension may be made subsequently to an international registration. A territorial extension:

• is effective from the date on which it is recorded in the International Register; and
• will cease to be valid on the expiry of the international registration to which it relates.

(See Article 3ter of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.)