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FAQ | Resource

Registering Trademarks: Designating Canada in Madrid Protocol Filings

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Protecting intellectual property assets, including trademarks, is essential for businesses nationally and globally. The Madrid Protocol may be a useful tool to extend trademark protection globally, including in Canada.   

The Madrid Protocol provides trademark owners the possibility of filing a single application for international registration with the World Intellectual Property Organization (WIPO) and subsequently designating other member countries where protection is sought. Each member country applies its own laws to determine whether or not a trademark will be protected in its jurisdiction. Canada joined the Madrid Protocol on June 17, 2019. Since then, Madrid trademark filings have been proven to be popular means to secure protection in Canada: for example over 10,000 filings with WIPO have designated Canada in 2019 alone and this number is expected to grow.

Individuals and businesses designating Canada in Madrid filings should be certain that they understand the process, related proceedings and any potential challenges. Stay current on some of the most commonly asked questions about Madrid filings designating Canada using our FAQ below.

Frequently Asked Questions(FAQ)

Q. What are the individual fees to designate Canada for purposes of a Madrid Protocol? Could there be additional fees payable to CIPO during the prosecution of the application in Canada? Is it possible to add Canada to an existing international registration?

Roger Kuypers - Life Sciences and IP lawyer in Vancouver, BC, Canada

 

Roger A.C. Kuypers Intellectual Property & Life Sciences Lawyer | Vancouver


Roger advises businesses and institutions on the development, acquisition and commercialization of technologies.  He also assists with corporate matters, finance and acquisitions.
 

A. The fees to designate Canada for the purposes of a Madrid Protocol application are 251 Swiss francs for one class of goods or services, and 76 Swiss francs for each additional class. Additional fees might be payable if the Examiner determines that some goods or services need to be moved to a class that was not included in the application at the time of filing. It is possible to add Canada to an existing international registration under article 3ter (2) of the Protocol.

Q. Is it possible for third parties to oppose an application for registration of a trademark? What is, broadly speaking, the process for such opposition proceedings?

A. Yes, third parties can oppose a Canadian trademark application.  To oppose, the Opponent must file a Statement of Opposition setting out all of the grounds being invoked within two months of the advertisement of the application in the Trademarks Journal and pay the CA $750 fee.  The other main steps are (i) filing a Counterstatement, (ii) filing evidence, (iii) cross-examination on affidavits (if requested), (iv) filing written arguments, and (v) conducting an oral hearing (if requested). It is not uncommon for a decision to issue in an opposition proceeding actively defended by the applicant 3 to 4 years after the filing of the Statement of Opposition.


Q. Is it mandatory in Canada to have an intention to use the trademark with all goods and services listed in the application? If so, how is that enforced?

Stacey Smydo - Intellectual Property Lawyer in Ottawa

 

Stacey Smydo Intellectual Property Lawyer | Ottawa


Stacey practices copyright litigation and has acted in matters before the Federal Court, Federal Court of Appeal, and the Copyright Board.
 

A. While it is not mandatory to state in the application that a trademark has been used or that the applicant has an intention to use the applied for trademark with all goods and services, it is nonetheless important to have at least an intention to use the trademark in association with all of the goods and services listed in the application at the time of filing. The absence of at least an intention to use the trademark in Canada is a recognized ground of opposition. The lack of intention could also be invoked by a third party to cancel the resulting registration.

Q. Are there any special considerations for surnames?

A. Under section 12(1)(a) of the Trademarks Act, a mark is not registrable if it is primarily the name or surname of an individual who is living or who has died within the preceding thirty years. The Registrar does not currently require a minimum number of occurrences in a telephone or other Canadian directory before raising this objection. The exception to this is if, as of the date of filing, the mark is “distinctive” given the circumstances. An important factor that a Court would consider in deciding whether a mark is distinctive in the circumstances is the length of time during which the mark has been used (section 12(3)).


Q. Does CIPO send all relevant correspondence to the designated agent in the international application? If not, how is it possible to receive this correspondence or become informed of developments as they occur?

Simon Hitchens - Intellectual Property Lawyer & Trademark Agent in Toronto

 

Simon Hitchens Intellectual Property Lawyer & Trademark Agent | Toronto


Simon regularly assists clients with trademark prosecution, portfolio management, the development of brand protection strategies and trademark opposition and expungement proceedings.
 

A. No - only some correspondence will be sent to the international agent handling the Madrid application. An initial office action will be sent, but other key documents such as a notice of default or, if a mark has reached registration, any materials relating to  summary cancellation proceedings, will not be received by the Madrid agent. Appointing a local Canadian agent of record will ensure that all CIPO materials are received by that agent and should reduce some of the associated risk.

Q. During the Canadian examination process of an application filed via the Madrid Protocol, is it possible for examiners to raise new objections in subsequent and additional office actions?

A. Yes – Canadian examiners can raise subsequent objections.  CIPO must notify the International Bureau within 18 months of the designated filing date whether or not the application is being provisionally or completely refused but, once that notice has been filed it is down to the applicant to overcome any objections raised (including any objections raised in subsequent office actions).


Q. Can a trademark application be co-owned by two or more parties? If so, are there particular considerations that should be kept in mind?

Mark Penner, Patent and Trademark Agent in Toronto

 

Mark Penner Intellectual Property Lawyer, Patent & Trademark Agent | Toronto


Mark D. Penner’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.
 

A. An application must specify the applicant’s name and address and an applicant must be a « person ». Section 2.1 of the Trademarks Act specifies that a « person » may include two or more persons who, by agreement, do not have the right to use the trademark in Canada except on behalf of both or all of them. A trademark application may therefore be co-owned by two or more parties provided the parties comply with Section 2.1 of the Act. The onus of such compliance ultimately rests with the applicant as the Registrar will generally not require a confirmation that the applicant is a « person ». Trademark applications may also be filed in the name of a partnership, an association, a joint-venture or a corporation.

Q. How much time does it take for an application to be examined if filed via the Madrid Protocol in Canada?

A. Where a trademark owner has registered or has filed a national application in their  “home” intellectual property office, the applicant must then submit the application for international registration (“AIR”) through this same IP Office, which will certify and forward it to WIPO. WIPO then conducts a formal examination and once the application is approved, WIPO will notify the Canadian Intellectual Property Office. The Canadian Intellectual Property Office will then make a decision as to whether the application  is compliant with the Canadian Trademarks Act and Regulations. There are currently backlogs in the trademark examination section of CIPO and it is likely that a first Examiner’s report or approval for publication will only issue close to the 18 month deadline mandated under the Protocol.


Q. What degree of specificity is required in Canada for goods and services? Are there any online resources that we can refer to in order to obtain a better sense of the expectations of CIPO?

 

Patricia Seguin Intellectual Property Lawyer & Trademark Agent | Montréal


Patricia Seguin has been managing large national and international trademark portfolios for more than 25 years. She provides opinions and creative advice on trademark selection, availability and infringement.
 

A. The most common objection raised by Canadian Examiners is that the description of goods and services is not in «ordinary commercial terms», in other words that the description is not specific enough. The degree of specificity required in Canada is quite high as compared to many other countries.  The ideal description will balance the need to obtain as wide a scope as the law will allow against the requirement to state the goods and services in specific and ordinary commercial terms. To assist in determining if a good or a service is acceptable, one online resource is offered by CIPO (https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03968.html. Do note that CIPO routinely accepts goods and services that are not listed in the manual.  Recently advertised trademarks can therefore also be very relevant sources of ideas.

Q. May examiners object to registration of a trademark on the basis of a lack of distinctive character?

A. Since June 2019, Canadian Examiners have a new tool to refuse the registration of a mark: the lack of distinctive character. In order to be registrable, a mark needs to have the intrinsic ability to distinguish the source of goods or services with which it is associated from the goods or services of others otherwise an objection will be raised. The Applicant will be given the opportunity to argue that the mark is inherently distinctive or to provide the Registrar with evidence that its trademark had acquired distinctiveness at the date of filing of the application. Of course, an Applicant that has not yet used its mark in Canada will not be able to provide evidence of acquired distinctiveness. It should be noted that some type of trademarks have been categorised as de facto lacking inherent distinctiveness: geographic locations, names of colors, laudatory words, some one or two-letter trademarks, etc.


Q. Do Examiners have the authority to formulate objections on the basis of prior applications and registrations?

Intellectual Property (IP), trademark, patents and copyrights lawyer in Montreal

 

Marek Nitoslawski Intellectual Property Lawyer & Trademark Agent | Montréal


Marek is a seasoned IP litigator whose winning strategies in patent, trademark and copyright matters have earned him the respect of clients, colleagues and the courts.
 

A. In Canada, applications for registration of a trademark undergo substantive examination, including whether the applied-for mark is likely to cause confusion with a prior registered or applied-for trademark. First, under our legislation, if the applied-for trademark is confusing with an existing registered trademark, the applied-for mark will be objected to by the examiner because it is not registerable (s. 12(1)(d)). Second, if the applied-for mark is judged to be confusing with a previously applied-for mark, the objection will be based on the fact that the applicant is not the person entitled to registration (s. 16(1)(b)).  In either case, the Examiner will refuse the application unless the applicant manages, through skillful argument by their counsel, to overcome the objection based on confusion.

Q. What weight is given to letters of consent given by the owner of an application or registration that is cited against an application?

A. Canada is a “first to use” jurisdiction. It is possible to oppose the registration of a trademark on the basis of prior use of a trademark in Canada as well as prior use of a trade name in Canada. It will be necessary to provide proper evidence of such prior use by way of affidavit evidence. It is generally expected that documentary evidence be provided to support any assertions of use. There is no requirement that the opponent’s mark or trade name be well-known in Canada through prior use. Since applications no longer indicate whether the applicant has used the trademark prior to filing, it may be advisable to conduct an investigation prior to filing an opposition to find out which party truly has priority.

 

Q. Does CIPO accept that related parties register similar marks for similar goods and services?

Intellectual Property (IP) lawyer and trademark agent in Québec city

 

Sébastien Roy Intellectual Property Lawyer & Trademark Agent | Québec City


Sébastien specializes in IP and commercial law. He advises and represents clients in litigation and in contractual matters in the different areas of intellectual property law, such as trademarks, copyrights, industrial designs, patents and trade secrets.
 

A. No. The Canadian Trademarks Act provides that confusing trademarks are registrable only if the applicant is the owner of all of the confusing trademarks. Minor variations in the manner in which the owner's name is set out may not necessarily indicate a difference in ownership. Where it is clear that the identity of the owner of the confusing trademarks is the same, the examiner will not cite those trademarks as being confusing. For example, ABC Co. Ltd. is considered to be the same owner as ABC Co. Ltd. doing business as XYZ Ventures. Otherwise, the Registrar will object to an application for the registration of a confusing mark filed by an affiliate (for instance ABC Canada Inc.) of the related party (ABC International S.a.r.l.) that owns a prior registration or a pending application for a similar or an identical mark in connection with similar goods and services.

Q. Do examiners object to the registration of trademarks on the basis of descriptiveness?

A. In Canada, the Registrar may raise an objection if the mark  is considered, whether depicted, written or sounded, either “clearly descriptive” or “deceptively misdescriptive” in the English or French languages of the character, quality or place of origin of the associated goods or services. The trademark must be considered as to the immediate impression created upon the everyday user or purchaser of the goods or services. A trademark that merely suggests the character, quality or place of origin of the associated goods or services is neither “clearly descriptive” or “deceptively misdescriptive”. 


Q. Are there any special considerations for names that identify a geographical origin, whether located in Canada or abroad?

 

Intellectual Property Lawyer & Trademark Agent | Montréal

Amélie’s work in intellectual property focuses on matters relating to trademarks, copyrights, defamation and the right to control one’s own image.
 

A. If a tradmark includes an element referring to a geographic origin (whether located in Canada or abroad), an objection will automatically be raised regarding the clearly descriptive character of the mark (i.e. that the mark is clearly descriptive of the goods and services’ geographic origin). If the mark features various elements, it may be possible to argue that the mark, as a whole, is not clearly descriptive of the geographic origin. Applicants are however now also further required to confirm whether or not the goods or services listed in the application originate from the geographic location. If the goods and services do not originate from said geographic location, the mark may still be refused on the basis that it is deceptively misdescriptive of the geographic origin of the goods and services, notwithstanding other words or design elements in the mark.

Q. Is it possible to contest a registration on the basis of non-use of the trademark? If so, what is, broadly speaking, the process for such contestations?

A. A trademark registered for at least three years may be expunged for non-use pursuant to summary cancellation proceedings filed under section 45 of the Trademarks Act. This administrative proceeding may be instituted either by the Registrar of Trademarks on its own initiative, or upon request to the Registrar of Trademarks from any third party. Within three months of the date of notice of the proceedings being sent to the registered owner, affidavit evidence showing that the mark was used in Canada in association with all the goods and services listed in the registration during the three-year period preceding the date of the notice must be provided. Failure to file evidence or failure to file satisfactory evidence may lead to expungement of the registration in whole or in part. It is also possible to contest a registration for non-use before a Court of law, in which case abandonment of the trademark must be shown.

Q. Is it possible to send letters of protest to Canadian examiners?

A. It is possible to send letters of protest to examiners relating to pending trademark applications under examination, but only with respect to confusion with registered or applied for trademarks or to complain of the use of a registered trademark to describe the goods or services of the applicant. While the Registrar of Trademarks will confirm receipt of said letters, no further information will be provided to the author of the letter, and the impact of such letter on the pending application will be at the sole discretion of the Examiner. Such letters of protest can be filed at any time prior to issuance of a registration. Advertisement of a trademark can be withdrawn following receipt of such a letter of protest.


Q. Is it possible to oppose an application to register a trademark on the basis of prior use of a trademark? If so, are there any time limitations for doing so?

 

Jean-Philippe Mikus Intellectual Property Lawyer & Trademark Agent | Montréal


Jean-Philippe combines in-depth knowledge and strategic thinking to help companies in the software, entertainment, consumer products, natural resources, social networks, online services, e-commerce and manufacturing industries.
 

A. Canada is a “first to use” jurisdiction. It is possible to oppose the registration of a trademark on the basis of prior use of a trademark in Canada as well as prior use of a trade name in Canada. It will be necessary to provide proper evidence of such prior use by way of affidavit evidence. It is generally expected that documentary evidence be provided to support any assertions of use. There is no requirement that the opponent’s mark or trade name be well-known in Canada through prior use. Since applications no longer indicate whether the applicant has used the trademark prior to filing, it may be advisable to conduct an investigation prior to filing an opposition to find out which party truly has priority.

Q. Is it possible for someone to oppose an application to register a trademark on the basis of the bad faith of the applicant?

A. It is possible to oppose all trademark applications published for opposition in the Trademarks Journal after June 17, 2019 on the basis of bad faith. Since this is a new ground of opposition there is limited guidance from Courts and tribunals. On the basis of earlier case law, it is possible that filings made by distributors, franchisees or licensees for the trademark of their counterparty would be held to be made in bad faith. The same would go for a party registering numerous well-known trademarks for goods and services other than those for which they are known. The way forward is unclear for other assertions of bad faith such as applying for a well-known foreign mark in Canada or refiling applications periodically in an attempt to avoid non-use cancellation.


Q. Is it necessary to declare use or provide specimens of use periodically to maintain trademark protection in Canada?

Janine MacNeil, Trademark Agent in Vancouver

Janine MacNeil Trademark Agent | Vancouver


Janine is an experienced Trademark Agent in Vancouver and a member of the firm’s Intellectual Property group. Start-ups and major companies in Canada and abroad seek her out for her in-depth knowledge of the law of trademarks.

 

A. Under the new legislation implemented on June 17, 2019, it is no longer a requirement to commercialize your goods and services for registration to be granted.  Therefore, a declaration of use is no longer required to perfect registration. There is no requirement in Canada for a trademark owner to submit specimens of use to maintain rights to a mark unless the registration is challenged by a third party or by the Registrar for non-use.
 

Q. Once protection is granted in Canada, is it possible to contest the grant based on prior use?

A. Section 18 of the Trademarks Act sets out the grounds for invalidating a trademark registration. An action set out under this section of the Act is made to the Federal Court as this is the only court authorized to strike an invalid trademark from the trademark register. The grounds for invalidating a trademark registration include prior use as a trademark or trade name. There is a time limit to invoking prior rights acquired through use. After the fifth anniversary following registration, it is no longer possible to contest a registration based on prior use unless it is established that the person who adopted the registered trademark in Canada did so with knowledge of that previous use.


Q. Is there are requirement that licenses be recorded on the Canadian trademark register?

Nathan Haldane, Intellectual Property Lawyer in Toronto

 

Nathan Haldane Intellectual Property Lawyer | Toronto


Nathan advises clients on all issues related to trademarks, copyright and advertising law. He has assisted a broad range of clients in prosecuting and managing their intellectual property portfolios.
 

A. No, licenses do not need to be recordedon the Canadian trademark register; however, the Trademarks Office will record a license or the termination thereof on file and note the license on the trademarks database upon request. If parties to a license agreement decide to record said license agreement with the Trademarks Office, it is merely to inform third parties; indeed, the Trademarks Offices takes no position as to the effect of such license recordals. 

Q. Are there any requirements in Canada regarding licensing agreements?

A. The only requirement is that the owner of the trademark must have direct or indirect control of the character or quality of the goods or services licensed in association with the trademark. It is however an important requirement. A license agreement may be oral or in writing; however, we always recommend that a written agreement be executed to evidence the existence of the license and describe the manner in which the owner maintains control over the character and quality of the licensed goods and services. Courts have yet to determine whether proof of the exercise of actual control is necessary when the parties have executed a license with terms allowing the owner to exercise control.


Q. What are “official marks” and what can be done if an objection is raised with regards to alleged confusion with an official mark?

Amy Tang Intellectual Property Lawyer | Montréal


Amy advises and represents clients in connection with intellectual property disputes and drafts proceedings related to copyright, trademark, patent and trade secrets.
 

A. Only public authorities in Canada may register an official mark to protect any badge, crest, emblem or mark they have adopted and used. Official marks provide for a larger scope of protection for the mark, as registration of any trademark which so nearly resembles the official mark so as likely to be mistaken for it will be prohibited, regardless of the goods and services associated with it. A simple way to resolve an objection raised with regards to alleged confusion with an official mark would be to obtain a consent from the public authority that owns the official mark. Evidence of the lack of resemblance in appearance between the marks may also be raised to counter the objection.

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