A trademark may be registered in Canada based on any one or more of the following grounds:
(1) actual use or proposed use in Canada by the applicant, (2) making known in Canada by the applicant, or (3) registration and use of the trademark abroad by the applicant. Use by a licensee instead of the applicant itself may also qualify. The last two grounds enable foreign applicants to obtain rights before there has been actual use in Canada. Again, an experienced trademark lawyer or agent should be consulted to determine how best to proceed.
A trademark application is subject to review by an examiner at CIPO. The examiner may approve the application for advertisement as filed, or may raise various requirements or objections. For example, there may be an objection that the mark is clearly descriptive of the relevant wares or services, that the wares or services should be defined in greater detail or that the mark is confusing with a prior application or existing registration. Applicants are given an opportunity to respond to such objections and, if appropriate, to amend the application.
Once an application is approved, a formal notice of approval is issued, and thereafter the application is advertised in the Canadian Trademarks Journal. Once advertised, the application may be opposed by one or more parties on a variety of grounds, including prior use of a confusingly similar trademark or trade name. Trademark oppositions, which are often lengthy and complex in nature, are decided by the Opposition Board, usually on the basis of evidence filed in the form of affidavits or declarations, and in some cases cross-examinations thereon, as well as written and/or oral arguments by the parties.
If no opposition is filed, or an opposition is unsuccessful or withdrawn, the application proceeds to allowance. Once allowed, in order to obtain a certificate of registration it is necessary to pay the registration fee and, if the application was filed based on proposed use, file a document entitled a Declaration of Use, stating that the mark applied for is now in use in Canada. A decision of an examiner or the Opposition Board regarding any of the above matters may be appealed to the Federal Court.
Generally, the minimum period required to obtain a trademark registration is 10 to 12 months, however this period can be substantially longer, especially where an opposition is filed. Once registered, the term of registration is 15 years from the date of issuance and is renewable for successive terms of 15 years each.
After the third anniversary of registration, failure to use a registered mark in Canada may result in the registration being vulnerable to summary expungement or amendment.
