In summary
This article highlights recent developments in the current examination landscape to provide guidance on how to streamline and make the most of your applications and obtain better protection, faster.
Discussion points
- Types of trademarks that are registrable in Canada and the applicable registrability standards
- Establishing entitlement to registration
- Overview of the current examination environment and tips and tricks to streamline the process
- Contrasting registrable versus unregistrable trademarks
- Post-registration matters including amendment and expungement of trademark registrations
- Upcoming changes to the Charter of the French Language in the Province of Québec
Referenced in this article
- Energizer Brands, LLC v Gillette Company
- Tweak-D Inc v Canada (Attorney General)
- Quality Program Services Inc v Canada
- Cheung’s Bakery Products Ltd v Easywin Ltd
- GAZETTE OFFICIELLE DU QUÉBEC
- Trademarks Act
Since significant amendments were made to Canada’s trademark laws on 17 June 2019, the Canadian Intellectual Property Office (CIPO), practitioners and agents have worked to adapt to the new regime and its associated challenges. This article provides an overview of developments over the past few years, along with a discussion of some of the principles underlying Canada’s trademark law. The year 2023 also saw significant structural changes to CIPO’s operations as well as upcoming amendments to the Charter of the French Language (the Charter) regarding the use of non-French trademarks in Québec.
Registrable trademarks
Canada is a first-to-use jurisdiction. The principal law is the Trademarks Act (the Act) and its associated regulations, which are administered by CIPO. The Act broadly defines a ‘trademark’ as ‘(i) 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 their goods or services from those of others, or (ii) a certification mark’.
Canada recognises many trademarks, including non-traditional marks, as shown in the screenshot from CIPO’s online filing system (Figure 1).
Figure 1. CIPO’s online filing system
This list is not exhaustive. Provided a ‘sign’ meets the definition of ‘trademark’ in the Act, then it could be registrable.
However, not all marks are registrable. For instance, even though distinctiveness has been a cornerstone of Canadian trademark law for decades, one of the 2019 amendments introduced an explicit prohibition and empowered CIPO to object to registration of a trademark, if ‘on a preliminary view,’ it is not inherently distinctive. Section 12 of the Act contains additional prohibitions, including marks that are names or surnames and marks that are, in English or French, clearly descriptive or deceptively misdescriptive ‘of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin’.
These prohibitions are not absolute: an inherently unregistrable mark can become registrable if the applicant can prove that the mark had become distinctive of the applicant at the date of the filing of the application. To prove acquired distinctiveness, the applicant must file, by way of affidavit, evidence of several years’ worth of use of the mark broken down by province and territory in Canada. If there are provinces or territories with little to no use, the resulting registration will be geographically limited to those regions where the applicant showed more significant use. Non-traditional marks in particular face high evidentiary hurdles of proving acquired distinctiveness.
Section 9 of the Act sets out a uniquely Canadian category of marks that are generally referred to as ‘prohibited marks’. These include marks that are scandalous, obscene and immoral or that falsely suggest a connection to a living individual. Within the broad category of prohibited marks is a sub-category called ‘official marks’. These are marks adopted by certain public authorities and are afforded a broader scope of protection than ‘regular’ trademarks. Specifically, section 9 prohibits any person from adopting ‘in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely be mistaken for’ a prohibited mark, including an official mark. Official marks do not undergo the same examination as ‘regular’ trademarks – they need not be distinctive and they are not assessed against other active marks in Canada, limited to specific goods and services or examined for inherent registrability. As long as the applicant meets the criteria for being a public authority and has ‘adopted and used’ the mark in some public-facing manner, the application will be permitted. Once advertised, an official mark essentially ‘freezes’ the rights of incumbent third parties, but any subsequent third party who wishes to register a mark that ‘so nearly resembles’ an official mark will be refused by CIPO without the consent of the official mark owner. Official marks do not, however, grant public authorities immunity from claims under the Act, and it may still be possible for incumbent parties with existing trademark rights to pursue public authorities for infringement and passing off.
Entitlement
Applicants are entitled registration if they are the first to file in Canada and no one else has, prior to the filing (or priority) date, used or made known a confusing trademark in Canada or used a confusing trade name in Canada that has not been subsequently abandoned.
Unlike many other countries, consent or coexistence agreements are given very little weight in Canada, as was made very clear by the 2023 case of Tweak-D Inc v Canada (Attorney General). There, the Federal Court of Appeal reinforced that the confusion analysis is first and foremost concerned with the consumer, regardless of any coexistence agreements between the parties. A registered trademark owner’s consent to the registration of a competing trademark is not dispositive of registrability.
Since 2019, an applicant can obtain a registration without claiming use, but the applicant must have either actually used or had a bona fide intention to use the applied-for mark with all of the listed goods or services on or before the filing date. There are also upcoming changes that will require a registrant to prove actual use before commencing legal action for infringement or depreciation of goodwill. As at the time of writing, these changes are not yet in force, but likely will be within the next year or two.
The prosecution process
There is still an extensive backlog at the examination branch of CIPO. As at the time of writing, it can take 40 months or more from the filing date to first examination for applications that are not filed using CIPO’s pre-approved list of goods and services (the List), although CIPO recently published new Service Standards aiming to reduce this timing to 28 months, effective 1 January 2024. These service standards represent a significant improvement over current timelines; in 2023, the delay in examination was over 50 months from filing. However, the current posted examination timelines are still far from reaching the target of 28 months.
Application requirements
All trademark applications must contain certain mandatory information, including the name and address of the applicant and the associated goods and services classified according to the Nice Classification system and set out in ‘ordinary commercial terms’. Additional requirements vary depending on the type of trademark. For instance, an application for a word mark must set out the mark in standard characters together with a statement that the mark is to be registered in standard characters. If any design mark is filed in colour, then a colour claim is mandatory. If a colour claim is not intended, the design should be in greyscale.
Applications for non-traditional marks have additional requirements. The mark must be distinctive of the applicant at the filing date. Beyond that, the standards for these kinds of marks are not clear as, to date, precious few applications have progressed beyond preliminary examination. Hopefully, a body of case law regarding non-traditional marks will develop in the next few years.
Applications for certification marks must include particulars of the defined standard and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services with which the certification mark is used or proposed to be used.
There are government filing fees, which correspond to the number of classes. Canada permits and even encourages multi-class applications (rather than multiple single-class applications) by reducing fees for each additional class. As of 1 January 2024, most trademark fees increased by 25 per cent, including those for filing applications, renewals, transfers of ownership and commencing proceedings before the Trademarks Opposition Board (the Board).
Pre-examination
Another uniquely Canadian requirement is that, in addition to being grouped according to the Nice Classification system, goods and services must be described in ordinary commercial terms. International applicants are often surprised by the extensive revisions required in Canada, especially compared to what they may have registered elsewhere.
CIPO maintains the List. If applicants are able to select their goods and services entirely from the List when filing, then CIPO will expedite the examination to approximately 18 months to first examination according to the new Service Standards, and applicants can avoid technical objections regarding their goods or services as the application will bypass that examination.
The List is not comprehensive, but CIPO will consider requests from applicants to have goods and services added to it. If the request pertains to goods and services that are specific and will likely benefit other applicants, they may be added to the List. This can be a helpful strategy in reducing examination times. CIPO may refuse to add esoteric or highly bespoke goods and services to the List but will nevertheless deem them ‘acceptable’. In such cases, it is not clear whether ‘acceptable’ goods and services will accelerate examination.
If an applicant did not use the List at the time of filing, CIPO will send the applicant an AI-generated pre-assessment letter before examination to advise that the goods and services specification or classification is not acceptable and invite applicants to amend according to the List.
In the following circumstances, an applicant can make a formal request for expedited examination, supported with affidavit evidence: to fulfil the registration requirement for enforcement purposes, to combat counterfeit goods at the Canadian border, to prevent the applicant from being disadvantaged in online marketplaces and to preserve a priority claim following a request from a foreign IP office. Recent experiences with this practice have been positive – in some instances, expedited examination takes place within weeks, or even days, of filing the formal request.
Substantive examination
Substantive examination is an assessment of whether a mark is registrable under both ‘relative’ and ‘absolute’ grounds. If the examiner identifies barriers to registration, they will issue an examiner’s report and invite arguments and amendments within six months. Since 2021, extensions of time are only available in limited circumstances, including a recent change in counsel, pending assignment, active opposition proceedings, consent negotiations with an official mark owner, compilation of evidence to overcome a non-distinctiveness objection and circumstances outside the applicant’s control.
If the response fails to overcome the examiner’s objections, the examiner will issue a further report. If the second response fails, the examiner may, but not necessarily will, issue a refusal, at which point the applicant must either give up or commence an appeal of the decision to the Federal Court (FC). Alternatively, if an applicant fails to file a response in a timely manner, CIPO will issue a notice of default providing a two-month grace period or the application will be abandoned.
While third-party petitions and interferences during examination are not available, Canada now permits incumbent trademark owners to ‘flag’ their rights to CIPO during examination. By filing a notification of third-party rights form, a party can identify potentially confusing applications or registrations to the examiner tasked with a particular application, which can help prevent problematic applications from being approved.
Approval, advertisement and registration
Once an applicant addresses all objections raised during examination, CIPO approves the application and then ‘advertises’ it for opposition from third parties for two months. If the application is not opposed, or if the applicant is successful in an opposition, it proceeds to registration and CIPO will send an electronic certificate of registration.
Post-registration matters
Rights conferred by registration v unregistered trademarks
Registration confers on the registrant the exclusive right to use the trademark throughout Canada in association with the specified goods and services and the right to prevent unauthorised third parties from using the same mark or any confusing trademark. While a detailed discussion of confusion is outside the scope of this article, a confusion analysis generally requires consideration of all the ‘surrounding circumstances,’ as well as five specific factors set out in section 6(5) of the Act, including the degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them.
Another unique feature of Canadian trademark law is section 22 of the Act, which prohibits any person from using a registered mark of another ‘in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto’. This section has been successfully used in parody and comparative advertising cases.
In one of the most comprehensive discussions of comparative advertising under Canadian law, the FC considered whether a comparative advertising campaign that made both direct and indirect references to a competitor’s brand violated the Act or the Competition Act. Duracell attached stickers to its battery packaging that claimed its batteries lasted longer than Energizer’s. Some of these stickers displayed Energizer’s registered trademarks ENERGIZER and ENERGIZER MAX (‘15% Longer Lasting vs. Energizer’, ‘Up to 15% Longer Lasting vs. Energizer Max’), whereas others did not display Energizer’s registered trademarks but referred to Energizer’s products indirectly (‘Up to 20% Longer Lasting vs. The Bunny Brand’, ‘Up to 15% Longer Lasting vs. The Next Leading Competitive Brand’). There is an interesting discussion of the advertising law aspects of these claims and whether they were adequately substantiated. For this article, it is material to note that the FC held that the claims that referred expressly to Energizer’s registered trademarks on packaging contravened section 22, but not the claims where its products were referred to indirectly (ie, the ‘Bunny Brand’). The FC emphasised there were too many additional mental steps that the average consumer would have to go through for these stickers to impact the goodwill of Energizer’s registrations that depicted the bunny mascot. Even if consumers noticed the reference to the ‘Bunny Brand’, which was in small type on Duracell’s stickers, they would also have to think of the Energizer bunny character and remember that this character is associated with Energizer. Without direct evidence showing that the average consumer goes through these mental steps automatically, the FC was not willing to infer that they do.
Registrations are tools to combat counterfeiting. Owners of registered trademarks (and copyrights) can file requests for assistance forms with the Canada Border Services Agency so it can inspect and detain counterfeit goods as they enter into Canada.
Unregistered trademark owners have rights, but they are subject to two important limitations that do not apply to registered marks. First, enforceability is limited to the tort of passing off, which is both recognised by common law and codified in section 7(b) of the Act. To establish passing off, a trademark owner must provide the mark possesses goodwill through use. This can often be a high threshold, requiring extensive evidence of sales, advertising, promotional activities, awareness of the brand in relevant trades and market presence. Second, an extension from the first limitation, is that unregistered trademark rights are geographically limited to the regions where the mark owners can prove goodwill.
Finally, amendments to the Québec Charter, coming into effect on 1 June 2025, impact the display of non-French trademarks on products, packaging and labelling and outdoor signage. On 10 January 2024, the Québec government released draft regulations to answer some, though not all, of the questions raised by Bill 96. The draft regulations were open for a 45-day public comment period. As at the time of writing, final regulations have not been released. Some of the most important takeaways of the Charter amendments and the draft regulations combined are set out below:
- Regarding products, packaging and labelling:
- A non-French trademark must be registered or the subject of a pending application; otherwise, it must be translated into French.
- Even if a non-French trademark is registered or the subject of a pending application, if it contains ‘a generic term or a description of the product’ those terms must be translated into French with the same prominence as the terms in non-French text, either on the product or on a medium permanently attached to the product.
- Products that do not comply with these requirements can still be sold in Québec until 1 June 2027, provided they are made before 1 June 2025.
- Regarding public signage:
- A non-French trademark must be registered if it is displayed on public signs visible from the street (including those that can be seen from outside a space, closed or not, or inside a shopping centre) (Street Signs).
- On Street Signs, French must be markedly predominant. This means that French has a much greater visual impact than the non-French text:
- French text occupies twice the space as the non-French text in the same field of vision;
- French text is of a permanent nature, is visible and legible; and
- the non-French trademark is accompanied by terms in French, such as a generic term, a description of the business or a slogan.
Uncertainties remain, notably in connection with the requirement to translate to French generic terms and descriptions of products included in a non-French trademark.
Amendment to the Register
Registered trademark rights are not immutable. They can be revoked or limited by voluntary withdrawal, failure to renew, summary cancellation for non-use and expungement. The first two mechanisms are administrative, while the second two involve inter partes proceedings.
Non-use cancellation is one of the primary means by which the Act implements Canada’s use requirements to maintain trademark rights. On or after the third anniversary of a trademark registration, any person can request that the Registrar issue a notice under section 45 of the Act, requiring a registrant to prove use of each of the goods and services listed in the registration within the three-year period preceding the date of the notice, or provide exceptional circumstances justifying non-use. The registration will be cancelled or amended to remove any goods and services that were not shown to be used. These proceedings are generally straightforward, and although the requesting party cannot cross-examine on the registrant’s evidence of use, both parties are permitted to make written arguments and oral submissions before the Board. At the conclusion of the proceeding, the Board will issue a decision either maintaining or striking the registration partially or entirely.
Expungement proceedings are more robust mechanisms used to attack a trademark registration and involve full litigation proceedings before the FC. Generally, a registration can be expunged because it was not registrable at the date of registration, the applicant was not entitled to registration, the subject mark was abandoned or is no longer distinctive, or the application was filed in bad faith. The 2023 decision in Cheung’s Bakery Products Ltd v Easywin Ltd made it clear that bad faith expungement required a fact-specific and flexible interpretation, and knowledge of a party’s prior use and rights may suffice to invalidate a registration. This ground is still, however, in its infancy, and the standards for what is or is not bad faith have yet to be conclusively set.
Endontes
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