12  Points About Canadian Trade-mark Law

1. Canada is a “use” based jurisdiction.  A mark must have been used somewhere in the world in order for it to proceed to registration.  Applications based on “Proposed Use in Canada” will not proceed to registration until a declaration is filed stating that use of the mark has commenced in Canada.
2. It is not possible to file a “Proposed Use” application if the mark has already been used in Canada.  If there has been use of the mark in Canada, such use MUST be claimed in the application.  Moreover, it is important that the date of first use claimed is accurate.  If actual use of the mark commences after the date of first use claimed in the application, the application may be successfully challenged.
3. Registration may be obtained without commencing use in Canada by relying on use anywhere else in the world and a registration in the applicant’s country of origin.   A claim of “foreign use and registration in the country of origin” may be made at any time before the application is published in the Trade-marks Journal.  A certified copy of the foreign registration, together with an official translation and the applicable fee, must be filed with the Office.
4. Currently Canada does not use the Nice International Classification system.  The Canadian Trade-marks Office requires a detailed description, in ordinary commercial terms, of the goods and services.  Any references to International Classes will be objected to by the Office.  For guidance on how to describe products and services, reference may be made to the Wares and Services Manual, together with Practice Notices.   These resources may also be found on the “Links” section of our web site.
5. Multi-class applications are available in Canada.  An application may contain an unlimited number of goods and services, without additional government fees.
6. The registration process is quite long, and may take up to 2 years, or longer.  The Canadian Trade-marks Office assumes an active role in preserving the integrity of the Canadian Register and, accordingly, there is a lengthy, substantive examination process for each application.
7. Oppositions are quasi-judicial proceedings that may take many years to resolve.  Oppositions tend to be very expensive because of their quasi-judicial nature.  Once a mark is published in the Trade-marks Journal, third parties have 2 months to oppose the mark.   An Opposition is commenced with the filing of pleadings (a Statement of Opposition), following which the applicant may file  a Counterstatement.  The parties then file evidence in the form of affidavits, and may request cross-examination of the other party’s witnesses.  The parties may also file written arguments and attend at an oral hearing.  The Opposition Board then issues a decision, which may be appealed to the Federal Court of Canada.  It should be noted that oppositions only relate to the registrability of a trade-mark.  In order to prevent use of a mark in the marketplace, recourse must be sought from the Courts.
8. Famous marks are not given statutory recognition in Canada, however, recent case law suggests that extended protection may be available.
9. Canada protects certain public marks as Official Marks.  The Registrar may provide public notice of marks, badges, crests, and emblems adopted and used by a public authority in Canada.  Official Marks are not restricted to any specific wares and services, therefore they enjoy an unusually broad scope of protection.
10. Quebec is a French-speaking Province, and doing business in Quebec requires compliance with their language laws.  You may use an English trade-mark in Quebec provided that you do not have a registered French version of the trade-mark and that you use the ®/MD (marque deposee), or TM/MC (marque de commerce) symbols as notice that you are using the English word(s) as a trade-mark.
11. Canadian Trade-mark law is federal.  A Canadian registration gives you the right to use the trade-mark across Canada, regardless if your business is based in only one Canadian Province.
12. Unregistered trade-marks may still be protected at common law in Canada, however, the scope of protection is far more limited than that of registered marks.