March 22, 2011
Although Canadian trademark prosecution shares many similarities with the United States, there are several notable distinctions. This article highlights some of the key differences.
Canada, in contrast to most countries including the U.S., does not employ a classification system for wares and services in trademark applications, nor are the government fees based upon classes. This generally provides a cost advantage to applicants in Canada.
In Canada, it is generally advantageous to include multiple filing bases in one application, such as use or proposed use in Canada, and use and registration abroad. If an opposition arises in respect of one basis (e.g. the applicant can not show use), the applicant may still ultimately prevail by having another valid basis for registration. However, applicants in Canada must be careful not to include a “proposed use” basis when in fact the trademark has been used in Canada. This can work against the applicant in opposition proceedings, as it is a valid ground of opposition. In contrast, in the U.S., it is common to base the application on “intent to use” when the applicant has use but is not able to determine the date of first use and simply wants to file the application as soon as possible, or if the applicant does not want to disclose its use date upfront for strategic reasons.
Applications (and ultimately, registrations) in Canada, as in the U.S., can be based upon registration in the applicant’s “country of origin.” However, Canada is unique in that it requires applicants to rely on this ground only where the mark has been used with respect to wares and/or services covered in the home-country registration. Often, non-Canadian applicants mistakenly include reliance on registration in the country of origin and use abroad, when in fact the trademark has not been used. Improperly relying upon this basis could leave the application vulnerable (on this ground) in an opposition proceeding.
Perhaps most importantly, Canada is not yet a party to the Madrid Protocol whereas the U.S. is. While the Canadian trademark registration process attempts to conform to some international practices and CIPO appears keen on joining Madrid, the unique Canadian examination practices (such as the timing of examination and no classification for wares and services) continue to pose a challenge to applicants during prosecution of Canadian trademark applications. If Canada joins Madrid, major changes to the Trade-marks Act and trademark prosecution in Canada are expected.
Janice M. Bereskin, B.A., is a partner in Bereskin & Parr LLP's Trademark Practice group.
Mina M. Chana, B.Sc. (Psych.), LL.B., is an associate lawyer in Bereskin & Parr LLP's Trademark Practice group.
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