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Goods

In Canada, a trademark is used in association with goods if, at the time of any sale of the goods the trademark is clearly marked on the packaging of goods or a bill of lading that accompanies them.

Services

A trademark is used in association with services if, at any time when the services are advertised, the trademark is used in performance or advertising of the services.

Use – or Proposed Use

When an applicant files an application to a Canadian trademark, the applicant may:

a) Already be using the trademark in Canada; or

b) Propose to use the trademark in Canada at a later date.

A trademark cannot be registered until the trademark is used in Canada by the applicant. Accordingly, when a Canadian trademark application is filed on the basis of ‘proposed use’ (equivalent to ‘intent to use’ or ‘ITU’ in the United States), ultimately (assuming all other hurdles to registration of the trademark are overcome in prosecution) before the trademark can be registered, the applicant must file a Declaration of Use. The date of first use in a Declaration of Use must be after the date that the application based on proposed use was filed (i.e. an applicant cannot file based on proposed use, and then later claim use prior to the date of the application)

No evidence filed

In Canada, no evidence is filed with the Declaration of Use.

Extensions

After allowance, up to 5 extensions, each of 6 months duration, for filing the Declaration of Use can be sought.

The post Use – the concept of “use” in Canadian trademark law appeared first on Miltons IP.

There were no great bargains to be had in Target’s unfortunate foray into Canada. What happened to Target with trademarks is particularly illustrative of how a cross-border move can go badly.  Put simply, Target came to Canada with much fanfare, lost approximately $7B US, and now two years later, Target is retreating via a messy bankruptcy of their Canadian subsidiary.

Target’s woes included substantial trademark difficulties.  When it came to Canada, it was confronted with a prior registration for TARGET for use in association with clothing retail stores.  Clearly this presented a problem.  Target challenged the prior registration but did not succeed in expunging it, and ultimately ended up purchasing the prior registration.  The value of the transaction has not been disclosed but is estimated to be in the “8 figures”.

In fairness to Target, the prior registration was longstanding and there had been sufficient use by the owner that it was not amenable to expungement.  Accordingly, Target really faced a situation with no pretty outcomes, but certainly their bargaining power could not have been improved by the fact that the issue was not resolved until just prior to opening of the stores.

However, as a general rule, with some advance planning, smart, frugal companies can get a much better result at remarkably low cost.  In particular, companies considering a cross-border expansion should rush to file trademark applications in Canada based on ‘proposed use’ (equivalent to ‘intent to use’ in the US)

Because the government fees for filing a Canadian trademark application are only $250 regardless of how many classes of goods or services are claimed in the application, and because it is straightforward to keep an “intent to use” application alive for four years or more, $2000 buys a very effective form of insurance for applicants who may want to enter the Canadian market in the future.

I admit that the Target story is actually not a perfect illustration of the value of proposed use applications in Canada (because of the clear prior registration they confronted), but because they have made such an ugly mess of their entire ‘Canadian adventure’ I don’t mind using them as a good example of imperfect trademark practices.

Neil

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A basic Canadian trademark search is a free direct ‘knock-out’ search of the trademarks register. This basic search is free has two important limitations:

a) It only looks for identical trademarks; and
b) The search is only of one database: trademarks registered in Canada and pending trademark applications in Canada. To add to the problem, the on-line form provided by the trademarks office is confusing and difficult to use.

Everyone should conduct a basic trademark search before filing a trademark application in Canada.

In Canada, the best form of trademark search is a full common law search, conducted using the sophisticated search algorithms and widest set of data possible. The data searched includes, in addition to registered and pending trademarks in Canada, corporate and business names registered federally and provincially, and names in use on the internet and in phone directories and the like. These common law searches cost $750+ and results are usually available within a week of ordering. We will conduct a full common law search for you starting immediately – please email us or call 1.866.297.1179 to begin.

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What is a trademark?

Why use a trademark?

Why register a trademark?

When to register a trademark in Canada – and when not to bother.

What is a trademark?

A trademark is a mark that distinguishes goods or services in the marketplace.

In Canada, a trademark is either a ‘wordmark’ composed of a word or words, or a ‘design mark’ which is composed of a design with or without words, or in a few rare cases, a ‘distinguishing guise’. More exotic forms of trademarks such as smells and colours (by themselves) have not yet been recognized as trademarks in Canada.

A trademark in Canada may be a name, logo, slogan, or design.

Why use a trademark? Many of the principles of trademark law are, implicitly (but rarely expressly) correlated to the good branding and marketing principles. In particular, it is usually a good idea to ‘brand’ goods (or services) with a distinctive ‘mark’ which distinguishes the source of the goods/services. Consumers frequently choose which product/service to buy on the basis of reputation – and they correlate reputation with a name, logo, slogan, design or other mark.

What is a trademark application? In Canada, a trademark application is really a ‘request’ more than ‘a thing’, but the phrase “trademark application” has two common usages:

a) It is the actual document that you file with the Government of Canada to start the process towards registering a Canadian trademark, and

b) It refers to the corresponding application in progress.

What is a trademark registration? In Canada, a trademark can be registered or unregistered. A registered trademark in Canada is one that has been formally entered onto the official register of trademarks. Trademark registration in Canada is a matter of federal jurisdiction, governed by the Trade-Marks Act.

A trademark that has not yet been registered is often marked with (TM). Only a registered trademark can be marked with (R). More information can be found on this page on proper marking of trademarks in Canada.

A registered trademark really represents a ”bundle of property rights” that can be bought, sold, licensed, and pledged as collateral for loans.

A trademark registration in Canada comes at the end of a successful application process, when the trademark is entered by the Registrar on the Register of Trademarks. Thus an applicant files an application to register a Canadian trademark and some time later (usually 12-18 months) if the the application has been successful, the trademark is ‘registered’.

View the Canadian Trademark Process Flowchart in PDF here.

Why register a trademark? No one is obliged to register a trademark in Canada. Registration of trademark is a key step in protecting and building value in your brand. The registration improves the rights of the owner of the trademark; creates an identifiable asset; provides some protection against claims of infringement or misuse by others; and, can be useful when dealing with other some other regulatory requirements (for instance, French language requirements for labelling in Quebec).

In Canada, the owner of an unregistered trademark has common law trademark rights (but these rights are quite limited). The owner of a registered trademark has much greater rights to the trademark (and to prevent others from using the trademark or confusingly similar trademarks) than the owner of an unregistered trademark.

Moreover, registration of a trademark provides some degree of protection for use of that trademark against claims of infringement from others. Accordingly, it is frequently highly advantageous to register a trademark. The more that you invest in marketing, and branding your products/services as different from those of your competitors, the more important it is to register your trademark(s).

What is the difference between a trademark and a trade name? In Canada, trademarks and trade names are quite different.

A trade name (or ‘business name’ or ‘corporate name’ depending on the context) is used to distinguish a business; a trademark is used to distinguish goods and services.

Registration of trade names is mandatory to meet the legal requirements for proper registration of businesses.

You are legally required to register a trade name in order to carry on business under a name other than your own in each province where you carry on business. For instance, if Jane Smith is the sole proprietor of a business known as “Joe’s Plumbing” in Toronto then Jane must register the trade name (“business name”) “Joe’s Plumbing” with the government of Ontario in order to carry on business under the “Joe’s Plumbing” name. Once she has completed this business name registration, Jane can, for instance, provide evidence of the business name registration to her bank so that she can accept cheques made out to “Joe’s Plumbing”. She can also contract with suppliers in the name of “Joe’s Plumbing” rather than having to use her name, Jane Smith.

Trademarks serve a very different purpose from trade names: they are all about distinctiveness in the marketplace. Trademarks help consumers identify the origin of goods and services, and trademarks help businesses preserve their distinctiveness in the marketplace.

Jane’s business name registration provides no protection against other people using either the identical name ‘Joe’s Plumbing’ if they don’t compete with her (even, for instance, if they are in the same province), or if they are using a confusingly similar name but are not in any way ‘passing themselves off’ as Jane. If Jane does not register her trademark, she may have some limited ‘common law trademark rights’, but if Jane really wants to try to prevent people from using Joe’s Plumbing or Joe’s Carpentry anywhere in Canada, she needs to try to register Joe’s Plumbing as a Canadian trademark.

When to register a trademark in Canada – and when not to bother.

As there is no legal requirement to register a trademark in Canada, every small business owner in Canada needs to ask themselves “should I bother to register a trademark, and if so, should I do it now or wait?”

Trademark registration costs time and money, so registration of a trademark in Canada is worthwhile if the value of the protection afforded by the registration is a reasonable return on the investment. Registration of a trademark can help create value in 2 different ways:

a) It provides a substantial level of comfort that the trademark you have chosen does not infringe the trademark rights of a third party, and thus that you will not be forced to change your trademark; and,

b) It provides substantial rights that you can enforce against third parties who might infringe on your trademark – whether direct competitors or not.

As a result, it is likely to be very worthwhile to register a trademark in Canada if:

– You intend to invest a substantial amount of money in packaging, signage, and the like;

– You intend to invest heavily in marketing the product or service;

– You intend to expand beyond one location;

– It would hurt your business if someone else adopted a similar or confusing name anywhere in Canada, whether they are a competitor or not;

– You intend to franchise or have other ‘partners’ also using the same name (for instance, if you have multiple ‘chapters’ of a charity); or,

– If it would cost a substantial amount in money or lost reputation to be forced to change your name later.

Similarly, it is not likely to be worthwhile registering a trademark if you carry on a small, personal business that is confined to one geographic area and that is closely associated with you (ie. Most sole proprietorships, and many small incorporated businesses). Generally, it is worthwhile to trademark a name on a product ‘sooner’ (ie. When the business is smaller) than for services. However, this rule of thumb is less applicable to internet-based services.

What is the deadline for filing a trademark? There is no deadline for filing a trademark. However, as your rights will be determined based on the date of your trademark application, it is important to file as soon as possible. Well managed companies usually file trademark applications based on ‘proposed use’ before they actually commence using the trademark in commerce. We recommend that you do the same if possible.

Who is a trademark agent? A registered trademark agent in Canada is an individual licensed by the Canadian Intellectual Property Office to represent trademark applicants. Only trademark agents may represent third parties before CIPO on trademark matters. While many trademark agents are also lawyers (attorneys), the two professions are quite distinct – most lawyers have little experience with trademark matters. Trademark lawyers represent trademark owners in court, in disputes, and in trademark transactions (licenses, buying/selling). There are roughly 2,000 trademark agents in Canada. Our firm is in among the top 100 firms in trademark filings.

Do you need a trademark agent? No, you do not “need” to hire a trademark agent to represent you before CIPO – you can act for yourself. But, bear in mind that you do not “need” to hire a dentist to help with your toothache either. Trademarks are complex, and the costs of making a mistake can be serious. We subscribe to the rule that ‘if it really matters, hire a professional to help, but on a reasonable (not unlimited) budget’. Applicants for Canadian trademarks who reside outside Canada must retain a ‘representative for service’ in Canada – usually this person is a registered Canadian trademark agent.

The post Basic Trademark Info: key info for people new to trademarks appeared first on Miltons IP.

-Ordinary marks.

-Certification marks.

-Official marks.

Most business trademarks are ordinary marks. Strictly speaking there is no such thing as a ‘service mark’ in Canada: trademarks may apply to either goods or services, although slightly different rules apply especially with respect to “use”.

Confusion. Two trademarks are confusing if use of both trademarks would lead to the inference that the goods or services used in association with the trademarks come from the same source. Detailed information on confusion in Canadian trademarks law can be found here. Similar sounding words for similar products are likely to be confusing; conversely, the exact same trademark can be used with very different products or services if it is unlikely to cause confusion as to the source. For instance, three different companies could own rights to GATOR as a trademark if, for instance, one sold a type of battery cables called GATOR, another sold clothing with GATOR on the label, and the third provided accounting services as GATOR Accounting.

Use. Use is a key concept in trademark law. In Canada, a trademark is used in association with goods if, at the time of any sale of the goods the trademark is clearly marked on the packaging of goods or a bill of lading that accompanies them. A trademark is used in association with services if, at any time when the services are advertised, the trademark is used in performance or advertising of the services. Information on proper marking of trademarks in use in Canada is provided here.

Association. Trademark rights are associated with goods or services from a specific source.

Use and Proposed Use. When an applicant files an application to a Canadian trademark, the applicant may:

a) Already be using the trademark in Canada; or

b) Propose to use the trademark in Canada at a later date.

A trademark cannot be registered until the trademark is used in Canada by the applicant. Accordingly, when a Canadian trademark application is filed on the basis of ‘proposed use’, ultimately (assuming all other hurdles to registration of the trademark are overcome in prosecution) before the trademark can be registered, the applicant must file a Declaration of Use. The date of first use in a Declaration of Use must be after the date that the application based on proposed use was filed (ie. An applicant cannot file based on proposed use, and then later claim use prior to the date of the application)

Fundamental requirements for registration. In order for an applicant to register a mark in Canada as a registered trademark:

a) The trademark must be registrable, and

b) The applicant must be the person entitled to register the trademark.

A Canada trademark application:

a) Will be assessed for compliance with these fundamental requirements by the Trademarks Examiner at the Canadian Intellectual Property Office during the prosecution phase and before the trademark may be registered, and,

b) Likely will be assessed for compliance with these fundamental requirements by the Trademarks Opposition Board if opposition proceedings are commenced by a third party before registration during the prosecution phase.

Examination. Every Canadian trademark application undergoes substantive examination: first as to whether the application is complete and in the proper form (“formalities”), and then once it is, it is given detailed review by a trademark examiner, employed by the Canadian Intellectual Property Office for whether this trademark can be registered at all in Canada, and if so, whether it can be registered by this applicant. As a result, virtually every Canadian trademark application will receive at least one Trademark Examiner’s Report and if the objects raised in this report are not overcome by the applicant, the application will be rejected.

Registrability and Entitlement. Two of the most important fundamental concepts in Canadian trademark law are “registrability” and “entitlement”.

Registrability. A trademark is not registrable in Canada if, at the date that the application is filed:

a) The trademark is deceptively misdescriptive;

b) The trademark is confusingly similar to another trademark used in Canada (or for which they have filed an applied for) previously by another person;

c) The trademark is primarily merely the name of a person living or deceased within the past 30 years.

Entitlement to register. The right to register a registrable trademark belongs to the first person to “use” the trademark in Canada, or, if no one has used it in Canada, the first person to file an application to register the trademark based on proposed use.

Opposition. A Canadian trademark application can be opposed by a third party after examination but before allowance. The Canadian trademark opposition process is complex and analogous to litigation. Learn more about the process of opposing a Canadian trademark application (and overcoming opposition) here.

Renewal. A Canadian trademark registration is valid for 15 years, and can be renewed upon payment of the renewal fee ($350 if paid online) for successive 15 year terms indefinitely. It is not necessary to file any evidence of use in order to renew a Canadian trademark registration, although of course the trademark registration can be cancelled for non-use in accordance with the usual rules.

Cancellation for Non-Use. A Canadian trademark registration may be cancelled if at any time that is 3 years after the date of registration, the owner has not used the trademark within the previous 5 years. Learn more about these administrative ‘cancellation for non-use’ proceedings here.

Cancellation for Improper Registration. A Canadian trademark may be cancelled (technically called “expunged”) if, at the time of registration, the trademark was not registrable or the applicant was not the person entitled to apply to register it. These ‘trademark expungement’ proceedings are conducted in Federal Court.

Enforcement and Infringement. In Canada, virtually all policing of trademarks is performed by the owners. Owners may sue ‘infringers’ for trademark infringement (as well as passing off, and other rights). Usually, infringment actions are commenced in provincial court. Owners must be vigilant to protect their marks. Owners who do not enforce their trademark rights risk losing them all through the doctrine of ‘dilution’.

Licenses. Trademarks are commonly licensed, to permit parties other than the owner to use the trademark in certain circumstances. Most franchise agreements, for instance, include a trademark license. It is extremely important the trademark owner retain some control over the use of the trademark by the licensee by imposing some standards. If not, then the trademark owner will lose trademark rights. This problem frequently affects the status of trademarks owned by one company and used by an ‘affiliate’, or ‘partner’ in Canada (or parts of Canada). If two or more entities use the same trademark, it is imperative that you spell out in writing clearly who owns the trademark and what rights the licensees do and do not have to use it. Licenses of Canadian trademarks can be filed with CIPO, but there is no requirement in Canada to file trademark licenses on the register.

Transfers (buying and selling) of trademarks. Canadian trademarks are a form of intellectual property that can be bought and sold (or more accurately, they are a bundle of rights which can be bought and sold), and pledged as collateral for loans. The agreement and purchase and sale is often accompanied by a stand-alone trademark “assignment”. The advantage of stand-alone assignments is that they constitute a clear, simple document (often referencing only a nominal price like $1.00) that can be filed on the public record easily and without risk of disclosing confidential information. Assignments of Canadian trademarks must be filed with CIPO to effect a proper change of ownership of the Canadian trademark. The assignment must be in writing, signed, and the signature of the assignor must be witnessed. Canadian trademark assignments do not need to be notarized, and do not have to be signed by the assignee.

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Staples has done a brilliant job of holding Office Depot out of the Canadian market, and one factor must be its skillful use of the BUSINESS DEPOT trademark which it acquired when it bought a beachhead in the Canadian market.

This is a great little story of two American titans battling it out in Canada, with one besting the other, and using Canadian trademark law very effectively as a weapon on its behalf.

Neil

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Table of Contents

• Unusual Features of Canadian Trademark Law
  • No Nice.
  • No Madrid
  • Registration and Use Abroad
  • Deadline for Filing
  • Key Concepts in Canadian Trademarks
    • Confusion
    • Use
    • Association
    • Proposed Use
    • Registrability
    • Entitlement to Register
    • First to Use not First to File
  • The Application Process
    • Application
    • Examination
    • Opposition
    • Registration
  • After Registration
    • Renewal
    • Removal: cancellation for non-use; cancellation for improper registration
    • Transfer of trademark rights: trademark assignments
    • Enforcement of Trademark Rights in Canada

Unusual Features of Canadian Trademark Law.

Canadian trademark law is similar to – but different from – trademark law in the United States and the United Kingdom (and therefore many other jurisdictions).

No Madrid Protocol.

Canada is not a signatory to the Madrid Protocol on trademarks.  Trademarks filed in Canada must be filed directly.

No Nice Classifications.

Canada does not employ the Nice classifications, either in the filing or prosecution of trademark applications, or, in oppositions or litigation when assessing confusion.  Instead:

i)                     the goods and services associated with the a trademark must be described in the application in ‘ordinary commercial terms’, and,

ii)                   In assessing confusion, whether during examination, opposition, or infringement proceedings, whether use of a mark in association with certain goods or services causes confusion with use of the same or a similar mark with the same or other goods and services is a question of fact assessed on the basis of the actual marks, the actual goods/services provided (not those described in the application/registration), and the likely impression on consumers (having regard to such factors as the nature and type of consumers, the channels of trade, etc.).

Registration in Canada of trademarks registered abroad.

Canada is unusual in that a potential basis for registrability is ‘use and registration abroad’.  This basis for registrability does not eliminate the requirement that the trademark application not be confusing with a prior Canadian trademark registration or pending application, but does provide a means to avoid the full impact of the registrability requirements “internal to the mark” (not primarily merely a name, not merely descriptive, etc.: see registrability).

Deadline for filing a trademark in Canada

There is no deadline per se for when a trademark application must be filed in Canada.  However, in accordance with the Paris Convention, in order for your Canadian trademark application to claim priority (ie. to effectively back-date the “application date”)from an earlier trademark filing outside in the United States or other country outside Canada, the Canadian application must be filed within <strong>6 months</strong> of the priority filing which must be the <strong>first</strong> filing in another country of the mark.  For instance, if you filed first in the US, then in the CTM, then in Mexico, to claim priority under the Paris Convention the Canadian trademark application must be filed within 6 months of the US application (the first).

Key Concepts in Canadian Trademark Law

In this section, we discuss several key principles of Canadian trademark law: registrability and entitlement to register, and thus confusion and descriptiveness, and use.  These principles are highly relevant to the assessment of the trademark application during the application process, but also in any litigation related to enforcement (infringement) or cancellation.

Confusion.

Two trademarks are confusing if use of both trademarks would lead to the inference that the goods or services used in association with the trademarks come from the same source.  Detailed information on confusion in Canadian trademarks law can be found here.  Similar sounding words for similar products are likely to be confusing; conversely, the exact same trademark can be used with very different products or services if it is unlikely to cause confusion as to the source.  For instance, three different companies could own rights to GATOR as a trademark if, for instance, one sold a type of battery cables called GATOR, another sold clothing with GATOR on the label, and the third provided accounting services as GATOR Accounting.

Use.

Use is a key concept in trademark law.  In Canada, a trademark is used in association with goods if, at the time of any sale of the goods the trademark is clearly marked on the packaging of goods or a bill of lading that accompanies them.  A trademark is used in association with services if, at any time when the services are advertised, the trademark is used in performance or advertising of the services.

Association.

Trademark rights are associated with goods or services from a specific source.  A trademark does not, therefore, float in the ether – it only has meaning (and value) to the extent that it is associated with certain goods and services that originate from a particular source.

Use and Proposed Use.

When an applicant files an application to a Canadian trademark, the applicant may:

a)      Already be using the trademark in Canada; or

b)      Propose to use the trademark in Canada at a later date.

A trademark cannot be registered until the trademark is used in Canada by the applicant.  Accordingly, when a Canadian trademark application is filed on the basis of ‘proposed use’ (equivalent to ‘intent to use’ or ‘ITU’ in the United States), ultimately (assuming all other hurdles to registration of the trademark are overcome in prosecution) before the trademark can be registered, the applicant must file a Declaration of Use.  The date of first use in a Declaration of Use must be after the date that the application based on proposed use was filed (ie. An applicant cannot file based on proposed use, and then later claim use prior to the date of the application)

Registrability.

A trademark is not registrable in Canada if, at the date that the application is filed:

a)      The trademark is deceptively misdescriptive;

b)      The trademark is confusingly similar to another trademark used in Canada (or for which they have filed an applied for) previously by another person;

c)       The trademark is primarily merely the name of a person living or deceased within the past 30 years.

Accordingly, ‘registrability’ is a concept that applies to anyone as a potential registrant (‘can anyone register this trademark?’), whereas ‘entitlement’ is a question of whether ‘this applicant can register this otherwise registrable trademark’.

Entitlement to register.

The right to register a trademark belongs to the first person to “use” the trademark in Canada, or, if no one has used it in Canada, the first person to file an application to register the trademark based on proposed use.

From application to registration: trademark prosecution in Canada

A trademark application in Canada is commenced by filing the prescribed form and paying the prescribed government fee of $250 (if filed online).  A trouble-free application usually proceeds from application to registration in 12-18 months.  A further government fee of $200 is payable upon registration.

Canada is a ‘substantive examination’ trademark regime and is not a signatory to the Madrid convention.  A trademark application is subjected to substantive examination by a trademarks examiner are the Canadian Intellectual Property Office, and usually receives one or more ‘Examiner’s Reports’.  If the objections of the Examiner cannot be overcome, the application will be rejected.  If the application is allowed by the Examiner, it will then be laid open for opposition.  Only after the period for opposition has expired and all oppositions (if any) have been overcome, may the trademark then be registered.

View the Canadian Trademark Process Flowchart in PDF here.

Fundamental requirements for registration.

In order for an applicant to register a mark in Canada as a registered trademark:

a)      The trademark must be registrable, and

b)      The applicant must be the person entitled to register the trademark.

A Canada trademark application:

a)      Will be assessed for compliance with these fundamental requirements by the Trademarks Examiner at the Canadian Intellectual Property Office during the prosecution phase and before the trademark may be registered, and,

b)      Likely will be assessed for compliance with these fundamental requirements by the Trademarks Opposition Board if opposition proceedings are commenced by a third party before registration during the prosecution phase.

Examination.

Every Canadian trademark application undergoes substantive examination: a detailed review by a trademark examiner, employed by the Canadian Intellectual Property Office for whether this trademark can be registered at all in Canada, and if so, whether it can be registered by this applicant.  As a result, virtually every Canadian trademark application will receive at least one Trademark Examiner’s Report and if the objects raised in this report are not overcome by the applicant, the application will be rejected.

Opposition.

A Canadian trademark application can be opposed by a third party after examination but before allowance.  The Canadian trademark opposition process is complex and analogous to litigation.  Learn more about the process of opposing a Canadian trademark application (and overcoming opposition) here.

After registration: renewal, removal, enforcement, and transfers.

A Canadian trademark registration is valid for an intial period of 15 years, and be renewed for successive 15 year periods indefinitely.  By and large, enforcing and defending your trademark rights, and making money from your trademark, is an entirely private affair in Canada (ie. the ‘police’ or ‘the state’ will not help you to enforce your rights), and disputes are resolved by civil litigation in either the Federal or Provincial courts.

Renewal.

A Canadian trademark registration is valid for 15 years, and can be renewed upon payment of the renewal fee ($350) for successive 15 year terms indefinitely.  It is not necessary to file any evidence of use in order to renew a Canadian trademark registration.  Issues of lack of use are dealt with under separate proceedings (discussed below).

Removal of a registered trademark.

A registered Canadian trademark may be removed from the register for two reasons:

• non-use, and
• improper registration.

 Cancellation for Non-Use.

A Canadian trademark registration may be cancelled if at any time that is 3 years after the date of registration, the owner has not used the trademark within the previous 5 years.  These proceedings for removal of the trademark from the register administrative (and not adversarial) in nature and are conducted internally to the Office of the Registrar of Trademarks.  In order to preserve the anonimity of the party interested in having the trademark removed from the register, non-use proceedings are usually initiated in the name of a law firm.  The party that wants the trademark removed files a request and pays the prescribed fee ($400).  No further evidence can by filed by the party that requests a non-use hearing.  The owner of the registered trademark is obliged to submit evidence of use of the trademark – otherwise, the trademark will be removed from the register.  Because of the technical requirements of the rules of evidence and the nature of proof of ‘use’ of the trademark, owners of registered trademarks are usually represented by legal counsel when they respond to a non-use proceeding.  Learn more about these ‘cancellation for non-use’ proceedings here.

Cancellation for Improper Registration.

A registered Canadian trademark may be cancelled and removed from the register(technically called “expunged”) if, at the time of registration, the trademark was not registrable or the applicant was not the person entitled to apply to register it.  These proceedings are adversarial in nature.  The litigation must be conducted in the Federal Court of Canada which is the sole court with jurisdiction to order an amendment to the Register of Trade-Marks.

Assignments and other trademark transfers

A Canadian trademark and all associated goodwill can be transferred.  This is frequently accomplished – and documented – by way of a standalone trademark assignment, which can apply to just one or more Canadian trademarks, or, can affect multiple trademarks in multiple jurisdictions.

There are very few formalities required for effective trademark assignments in Canada.  An assignment must be in writing and signed by the assignor.  They do not need to be notarized.  They do not need to be witnessed, although that is good practice.  They do not need to be signed (or accepted) by the assignee, although that too is good practice.

To register an assignment of a Canadian trademark on the Register of Canadian trademarks it is not necessary to file the original assignment.  Therefore, we do not require original assignment documents from you – a scanned version of the trademark assignment (preferably in PDF), or fax, is sufficient.  In fact, all that the Canadian trademarks office requires is ‘evidence’ of the assignment, and thus even the assignment per se is not absolutely required (although best practice is to file the trademark assignment itself, rather than indirect evidence that an assignment has taken place.)

Transfers of trademarks between separate corporate entities within one corporate group should be properly documented by way of a signed assignment, and this assignment recorded on the trademark Register.

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 Click the links to watch the videos:

• Patents
• Trademarks
• Industrial Designs (design patents)
• Copyrights
• Case study

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