Trademark law in Canada is governed by the federal Trademarks Act (R.S.C., 1985, c. T-13), which provides the framework for protecting trademarks. The authority to legislate trademarks is granted to the federal government under the Constitution Act, 1867. A trademark is a sign, symbol, word, design, or combination of these used to distinguish the goods or services of one business from those of others.
What Can Be Registered as a Trademark?
Trademarks can include:
- Word marks: Names, slogans, or taglines.
- Design marks: Logos, symbols, or images.
- Combination marks: Words and designs combined.
- Non-traditional trademarks: Sounds, holograms, scents, and textures (if distinctive).
What Cannot Be Registered?
- Names and surnames (unless distinct).
- Clearly descriptive marks.
- Deceptively misdescriptive marks.
- Generic terms.
- Marks that are confusingly similar to existing trademarks.
- Marks prohibited under the Trademarks Act (e.g., official marks).
Aspects of Trademark Law
- Trademark Application
- Trademark Ownership
- Trademark Infringement
- Trademark Licensing
- Trademark Enforcement
Trademark Application Process in Canada
- Search: Conduct a trademark search to ensure the mark is unique.
- Filing: Submit an application to the Canadian Intellectual Property Office (CIPO) with details about the mark and its use.
- Examination: CIPO reviews the application for compliance with the Trademarks Act.
- Publication: If approved, the mark is published in the Trademarks Journal for opposition by third parties.
- Registration: If no opposition is filed or resolved, the trademark is registered.
Trademark Duration
Registered trademarks in Canada are protected for 10 years from the registration date. Trademarks can be renewed indefinitely for additional 10-year periods, provided renewal fees are paid.
Rights of Trademark Holders
A trademark holder has the exclusive right to:
- Use the trademark in association with specific goods or services.
- License the trademark to others.
- Prevent unauthorized use of confusingly similar marks.
Trademark Infringement
Trademark infringement occurs when a third party uses a mark that is identical or confusingly similar to a registered trademark without authorization. Remedies include injunctions, damages, and account of profits.
Trademark Licensing and Assignment
Trademarks can be licensed or assigned. Licensing allows the owner to permit others to use the trademark under specific conditions, while assignment transfers ownership of the trademark.
Unregistered Trademarks
Unregistered trademarks are protected under common law through “passing off” actions. However, registration provides stronger legal protection and nationwide rights.
International Trademark Protection
Canadian trademarks are territorial and provide protection only within Canada. Businesses seeking international protection can file through the Madrid Protocol or apply directly in other jurisdictions.