Canada
(From Ministry of Foreign Affairs website – Regional index)

1.Introduction

Useful information when protecting trademark rights in Canada is presented below.
It is our hope that our clients will find this page helpful in protecting their intellectual property overseas.

< Approximate time from application to registration of trademarks in Canada >
(As of March 2018)

Currently, it takes approximately 18 months from the date of filing to the date of registration of a trademark. *It depends on when the Declaration of Use is filed.

 

★Consultations and inquiries

Should you have any inquiries etc. regarding the content of this page, please feel free contact us via telephone, email (to our legal department) or using our website’s contact form.

 

 

 

2. Trademark Rights in Canada

*[Revision on Trademark Act]*A revision on the Trademark Act is planned to enter into force at the beginning of 2019, but the schedule may be postponed.

The Canadian Intellectual Property Office (CIPO) has announced that the Trademark Act will undergo a large revision.
(The amendment draft was approved in 2014. At the time of approval, the amendment was supposed to come into force within one to two years, but the enforcement has been postponed several times.)
Canada intends to accede to the Madrid Protocol.

• Revisions to be made

  • 1)Abolishment of application basis and declaration of use.
  • 2)Nice international classification will be introduced and the classification system will start.
  • 3)The term of trademark right will be 10 years.
  • 4)Abolishment of associated trademark system.
  • 5)Introduction of divisional application system.

 

A. Application to Registration

(1) Use principle and registration principle
Canada employs a system based on the “use principle”, under which a trademark right arises upon use of the trademark.

(2) Term
15 years from the registration date(Protection of the trademark starts from the registration date)
• Renewable for every 15 years → Renewal application can be filed at any timing before the expiration date of the term.

(3) Classification (goods or services)
 In Canada, no classification system (such as designated goods and services) is provided, i.e., the Nice Classification has not been introduced.
→ Since the concept of classification does not exist, goods/services that fall under multiple classifications in the international classification can be designated in a single application. However, designated goods and services need to be clearly specified. It is said that one of the most major rejection reasons is ambiguity of the contents.

(4) Application to Examination

1) Trademark Application

i) Necessary Information
● Name and address of applicant (in English language)
● Designation of good(s)/service(s)
● Description of trademark
● Power of attorney (submission is not necessary)
● Basic information of application

It is necessary to indicate on which one of the following (1) to (5) the application is based.

  • (1) Use in Canada (Prior Use in Canada)
  • (2) Plan or intention of use in Canada (Intent to Use, ITU)
  • (3) Use in foreign country and application or registration in the applicant’s home country (Use & Registered Abroad)
  • (4) Trademark well-known in Canada (Well-Known Trademark in Canada)
  • (5) Combination of the above items

ii) Application Publication System
Unlike Japan, the application publication system is not employed in Canada.
A trademark for which a trademark right is sought is published for acceptance of an opposition(s) after the trademark is determined to satisfy the requirements of registration through examination.

iii) Disclaimer (Partial Abandonment of Right)
Although examiners do not require a disclaimer, an applicant can voluntarily file a disclaimer on the applicant’s own initiative. Note that the disclaimer refers to a statement in which an applicant swears not to claim an exclusive right as to a particular part of his/her trademark if the trademark partially includes words that are recognized as being so descriptive as to lack discrimination.

 

2) Examination
As with Japanese trademark system, the first-to-file principle is employed in terms of examination.
・A response to an office action needs to be filed within 6 months from the date of issuance of such an office action.

(5) Publication of Application
In a case where no rejection reason is found as a result of examination or where all rejection reasons are overcome, the application is published to public so that an opposition(s) can be raised.

(6) Opposition
Anyone can raise an opposition within 2 months from the date of publication of the application. If no opposition is raised within the above period or no reason is determined to exist in an opposition, a Notice of Allowance is notified.

(7) After Notification of Notice of Allowance

  • • Payment of Registration Fees
  • • Payment of registration fees needs to be made within 6 months from the date of issuance of the Notice of Allowance.
  • • Declaration of Use (in case where application is based on intention of use)
  • • Declaration of Use needs to be filed within 3 years from the date on which the application was filed.
    → An applicant needs to declare that he/she used the trademark after the date on which the application was filed. Unless such a declaration is made, the CIPO does not register the trademark.
  • • 6 months extension is obtainable for the due date of submission of Declaration of Use, if a legitimate reason exists.
    → The legitimate reason refers to a case where, for example, the use of the trademark in Canada is delayed due to the applicant’s business scheme.
    → The due date is extendable to the maximum of 3 years. As such, extension of 6 years or more (from the date on which the application is filed) cannot be admitted. (Additional 1 year extension is obtainable in a case where the good(s) or service(s) is in wait for governmental permission.)

(8) Registration and Renewal of Trademark
Upon completion of the procedure in (7), trademark registration is completed and a certificate of registration is given to the applicant.

  • Term: 15 years from the date of registration
    → Procedure for renewal can be taken at any timing within the term of the trademark (the renewed term lasts for 15 years from the date of renewal).
    → Grace period of 6 months is provided after expiration of the term (with no additional fee).

 

B. Application under Madrid Protocol
■ Since Canada has not acceded to the Madrid Protocol, international application utilizing the Madrid Protocol is not available.
Under the current system, direct application is the only way to file an application in Canada.

C. Treaties

Canada’s accession to the treaties is as below.

Paris Convention WTO Agreement Trademark Law Treaty Madrid Protocol Nice Agreement
Yes Yes No No *1 No *2

*1 Canada is going to accede to the Madrid Protocol in the near future.
*2 Prior to the revision on the Trademark Act, trademark applications following the Nice Classification have been accepted since September 28, 2015.