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 Canadian
Trademark Law and Practice – “Tips” for Foreign Applicants
Madelaine Saginur
While many of the principles underlying
trademark law are universal, different jurisdictions have
their own particularities when it comes to trademark practice.
Canada is no exception. What follows is a brief description of
select aspects of Canadian trademark practice which differ
from many other jurisdictions.
This article
focuses on features of Canadian trademark practice which fall
into three categories: (1) the centrality of “use”; (2) the
fact that Canada has not signed on to the Singapore Treaty;
and (3) assignments and licenses.
1. Use – Central Tenet
Use is at the heart of the Canadian trademark system. In
general, it is use of a trademark that confers rights in that
trademark. This importance of use materializes in a number of
contexts:
a. Use alone, without an application, confers
rights in that trademark in association with the relevant
goods or services. In other words, should an applicant [“A”]
apply for a mark on the basis of “proposed use in Canada,”
when another party [“B”] has used that trademark prior to the
applicant’s filing date, B could successfully oppose A’s
application, or otherwise challenge A’s rights, given B’s
prior rights. The easiest way for A to avoid such a potential
challenge is to conduct a comprehensive search, both of the
Canadian Trademarks register and of the Common Law, prior to
filing.
b. Use of a trademark, either in Canada or
abroad, depending on the filing basis, must commence before
the trademark application can proceed to registration. For
applications filed on the basis of use in Canada, this
requirement has already been met, and once allowed, no further
documentation of use is required. For applications filed on
the basis of proposed use in Canada, it is necessary to submit
a signed “Declaration of Use” to the Canadian Trademarks
Office attesting to the fact that use in Canada has begun. For
applications filed on the basis of foreign use and
registration it is necessary, at the time of filing into
Canada, to have not only a foreign application or registration
but also foreign use of the trademark (for a full discussion
of the law on this point, please refer to Marina Stipanac’s
article in MBM’s September 2008 newsletter).
c. It is crucial to obtain proper use
information prior to filing in Canada, as the consequences of
filing a trademark application in Canada on an untrue basis
may be fatal. Unlike certain other jurisdictions, in Canada
one cannot file based on proposed use and later switch the
basis to use, if it is later discovered that use in Canada
commenced prior to filing. Conversely, it is possible to file
an application based on use and later switch to proposed use.
More generally, it is possible to move the date of first use
to a later date; however, it is not possible to move the date
of first use to an earlier date.
2. Canada is not a member of the Singapore
Treaty
Canada has not signed or ratified the Singapore
Treaty on the Law of Trademarks. Thus, certain practices
common to all countries which have signed and ratified this
treaty do not necessarily apply to Canada. For example:
a. Canada does not require adherence to the
Nice Classification of goods and services. The Canadian
Trademarks Office simply requires a description of goods and
services in “ordinary commercial terms.” In terms of
Government fees, the fees are the same regardless of how many
“classes” of goods and/or services are included in an
application.
b. Canada does not currently have a mechanism
for divisional applications. If certain goods or services are
objected to during examination but not others, or if a mark is
opposed on some of the goods/services and not others, or if
after allowance some of the goods and services are in use but
not others, there is no mechanism in Canada to split the
application into two or more applications, and proceed with
the registration of the non-problematic application while
continuing to prosecute, defend against opposition, or request
extension of time to file a Declaration of Use for the other(s).
3. Assignments and Licenses
Since the purpose of trademarks is to identify the source of
goods or services, it is not surprising that there is some
tension between trademark law and the law on assignments or
licenses. Three points in particular merit discussion:
a. Canada is statutorily required to group
together marks that, if owned by different entities, would be
considered confusing. These marks are known as “associated
marks.” Associated marks have to be owned by the same party.
It is impermissible to assign a trademark that has been
associated with other trademarks, unless all the associated
trademarks are assigned. It is possible to disassociate marks
that the Canadian Trademarks Office has associated, if the
goods and/or services are sufficiently unrelated. After
disassociations, the previously associated marks may be owned
by different parties. Assignments must be recorded with the
Canadian Trademarks Office.
b. For a trademark license to be valid in
Canada, the licensor must have, inter alia, “direct or
indirect control of the character or quality” of the goods or
services. However, In Ontario, the Arthur Wishart Act states
that if certain criteria are met, then a franchise has been
created. These criteria include,
• the grant of the right to the franchisee to
sell goods or services substantially associated with the
franchisor’s trademark or representational or distribution
rights to sell franchisor’s goods or services; and
• the exercise of significant control over or
significant assistance in the franchisee’s method of operation
by the franchisor.
If a franchise exists, duties of disclosure and
fair dealing are imposed on the franchisor. In order to ensure
that a trademark license agreement ensures that the requisite
control over the character or quality of the goods and/or
services is maintained by the licensor, without inadvertently
creating a franchise, we recommend that a proper license
agreement be drafted.
c. It is necessary to have proper licensing in
place between any two parties, even if they are related
companies, such as wholly-owned subsidiaries. While some
jurisdictions acknowledge the relatedness of these companies
for the purposes of trademark use, Canada does not. Without
proper licensing in place, a related company could dilute the
distinctiveness of a trademark through its use of the
trademark. Again, we recommend that a written license be
prepared.
While this is by no means a comprehensive guide
to Canadian trademarks, it should serve to assist in
maximizing the strength of foreign applicants’ trademark
rights in Canada, and to guide foreign applicants in forming
their strategy for protecting their trademarks in Canada.
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2009 Newsletter
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