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Legal Guide


Intellectual property is protected in Canada under the laws relating to trade-marks, copyright, patents, industrial designs, integrated circuit topography and trade secrets.

On June 19, 2014, the Government of Canada made significant amendments to the Trade-marks Act in a Budget Implementation Bill (Bill C-31, Economic Action Plan 2014 Act, No. 1). The specific amendments to the Trade-marks Act are not yet in force, but are expected to be made effective in the spring or summer of 2015, as soon as the necessary regulations are drafted. Once these regulations are in place, the landscape of Canadian trade-mark law will be changed dramatically. These changes include the removal “use” as a condition for registration, the adoption of the Nice international classification system, the recognition of color and sound marks, and participation in the Madrid Protocol international filing system. The information contained below is accurate as of September 2014. However, it is strongly recommended that you consult with legal counsel for answers to your trade-mark questions and that you review your brand protection strategy in Canada in view of the pending changes to Canadian trade-mark law.


Trade-mark law


General

The Trade-marks Act (Canada) defines a “trade-mark” as a mark that is used for the purpose of distinguishing wares or services manufactured, sold, leased, hired or performed by the owner of the trade-mark, from the wares or services of others.


A trade-mark may take the form of a word or phrase, a picture or label, numbers, the shape of a product or its packaging, and take on aspects of get-up and color, or anything which is capable of distinguishing wares and services from the wares and services of others, so long as it is used as a trade-mark.


A trade-mark need not be registered, but an unregistered trade-mark can only be enforced by an action for passing off. It is often difficult to establish all of the conditions required to prove a claim for passing off; it is, therefore, advantageous to register the mark, if it is registrable.


Registration

Generally, a trade-mark cannot be registered if it is not:


  • It is primarily the name or surname of an individual;
  • It is clearly descriptive or deceptively misdescriptive of the character, quality or the place of origin of the related wares or services, or of the conditions of, or the persons employed in, the production of such wares or services;
  • The name in any language of the related wares or services;
  • It is confusing with a registered trade-mark; or
  • One of the marks is specifically prohibited by the Trade-marks Act.


An applicant is entitled to the registration of a (registrable) trade-mark if the applicant:


  • Has used or made known the trade-mark in Canada;
  • Has duly registered the trade-mark in his or her country of origin (includes WTO countries), which must be a member of the Paris Convention for the Protection of Industrial Property (“Convention”) and has used the trade-mark; or
  • Intends to use the trade-mark in Canada, and actually uses it after allowance of his or her application, but before registration.


Where the applicant does not reside in Canada, an appointment of a representative for service in Canada must be included in the application.


Rights conferred by registration

Valid registration of a trade-mark in Canada gives the owner the right to exclusive use of such trade-mark throughout Canada for 15 years in respect of the wares and services for which it was registered. Registration may be renewed indefinitely for further periods of 15 years.


The owner of a registered trade-mark can bring an action for infringement and/or passing off against a person who, without authorization, sells, distributes or advertises wares or services in association with a confusing trade-mark or trade-name. The remedies available for infringement of a registered trade-mark or for passing off include: an injunction; damages; or an accounting for profits, destruction of infringing materials and costs.


Licensing of trade-marks

A third party may be licensed to use a trade-mark by, or with the authority of, the trade-mark owner, provided that the owner retains under license the direct or indirect control of the character or quality of the wares or services associated with the trade-mark. Such control will be presumed where public notice is given regarding: (i) the fact that use of the trade-mark is a licensed use; and (ii) the identity of the owner. Subject to any agreement to the contrary, the licensee may call on the owner to take proceedings for infringement of the trade-mark. If, within two months of being called on by the licensee, the owner refuses or neglects to take action, the licensee may institute proceedings for infringement in its own name, as if the licensee were the owner. The owner must be made a defendant to proceedings commenced by the licensee and the owner may be liable for costs.


Marking

Canada’s Trade-marks Act does not contain any marking requirements. However, trade-mark owners often indicate their registration through certain symbols, namely, “R” in a circle (registered), “TM” (trade-mark), “SM” (service mark), “MD” (marque déposée) or “MC” (marque de commerce). Although the Act does not require the use of these symbols, it is advisable to use them. The symbols TM, SM or MC may be used regardless of whether the trade


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