Trademark in Canada

Canada is not part of the international trademark system, therefore it is only possible to obtaining protection by filing a Canadian trademark application

Shall be registered as mark signs, letters, words, numerals, design, colors or combination thereof, sounds and, in certain circumstances, three-dimensional trademarks.

Trademark application in this Country can be based: a) on the use of the trademark in Canada by the applicant; b) on the fact that the trademark has become well known in Canada (rarely used); c) on a corresponding trademark registration or application in a Paris Convention country, together with the use anywhere in the world at the time of filing of Canadian application; d) on the proposed use of the trademark in Canada by the applicant.

It is possible that such bases are used concurrently or alternatively.

After the filing, the Examining Attorney makes a complete review of the mark, including a search for earlier conflicting marks. Typically, as Canada has not adhered to the Nice Classification, most reports raise issues as to the respecification of the wares/services.

If the Examiner finds some obstacles to the registration, an office action is issued. It is possible to reply to the office action within 6 months (it is possible to ask for a further period of six months, if needed) or the application will be declared abandoned.

In the event no office action is issued by the Examining Attorney, or in case you have overcome the refusal, trademark application will be published in the Trademark Journal.

Third parties will have two months from the publication date to file an opposition to the registration.

The registration of a trademark is subject to renewal within a period of fifteen years from the date of registration.

Trademark registration is subject to cancellation in the event of non-use for three consecutive years.