Canada Takes a Step Toward Joining the Madrid Protocol, Singapore Treaty and Nice Agreement on Trade Marks

On January 27, 2014, the Canadian government tabled five international intellectual property treaties, including three major trade mark agreements – the Madrid Protocol, the Singapore Treaty and the Nice Agreement on the international classification of goods and services.

This is the first step toward ratification and implementation, which will require significant changes in Canadian trade mark law and procedures.  The government may introduce draft legislation as early as March, 2014, after the minimum 21-day waiting period for debate in Parliament, but don’t hold your breath – if the delays in updating our copyright legislation are any indication, the process is likely to take a while.

Stay tuned for further developments.

In the meantime, here are some key differences between current Canadian trade mark practice and that of the United States and/or the European Union which trade mark practitioners should be aware of:

1. Madrid Protocol

Canada is not a member of the Madrid Protocol. The only way to register a trade mark in Canada is by filing a Canadian application.

2.  No Classification System

Canada does not follow the International Classification System, so you don’t need to identify which class each item belongs in. However, the goods and services must be described in ‘ordinary commercial terms’ and specifically enough to satisfy the examiner or a query will follow.

There is only one filing fee, so applicants may claim proposed use for a wide range of goods and services at no additional cost so long as there is a bona fide intention to use.

3. Applicants do not have to sign the application

Canadian agents can prepare and file an application based on the information and instructions provided. No Power of Attorney, declaration or other documentation is necessary. This means less delay waiting for the applicant to ‘sign’ documents before filing.

4. Appointment of Agent and Representative for Service

If the applicant is not domiciled in Canada, it must appoint an agent and representative for service with an address in Canada or the application will not be allowed to proceed.

5. Multiple claims

An applicant can file on more than one ground – eg, actual use for wares, proposed use for services and registration and use abroad for both – for no additional cost.

If a proposed use claim is abandoned and a claim for actual use is successfully challenged in an opposition, a claim based on registration and use abroad may still be valid.

6. Proposed use

While applicants may claim proposed use for a wide range of goods and services so long as there is a bona fide intention to use the mark for all of them, once a Notice of Allowance issues, the application cannot proceed to registration until the applicant files a Declaration confirming use in Canada for each item claimed and not voluntarily abandoned.

There is no procedure for converting a proposed use application to one based on actual use.

If you claim proposed use where the mark has actually been used in Canada at the time the application was filed, it may be challenged in an opposition as invalid.

7. Definition of use for goods

A trade mark is deemed to be used for goods in Canada if, at the time of the transfer of the property in or possession of the goods, it is marked on the goods themselves or on the packages in which they are distributed or is in some other way so associated with the goods that notice of the association is given to the purchaser or recipient.

There has to be a transfer of possession in Canada – use is not established when goods are advertised in Canada or sold or shipped from another country, only when they are actually delivered and the buyer receives them and has notice of the mark.

8. Definition of use for services

A trade mark is deemed to be used for services if it is used or displayed in the advertising or performance of those services in Canada.

The services must be capable of being performed in Canada. Advertisement in Canada alone does not constitute use if the services are not available to be performed here.

9. The first use date must be accurate

If an application is based on use in Canada and the claimed date of first use turns out to be earlier than the actual date of first use, the resulting registration, if challenged, is vulnerable to cancellation for a material misrepresentation.

10.  Registration and use abroad

An applicant wishing to rely on a foreign application or registration as the basis for a claim must confirm that the mark has actually been used in a foreign country for the claimed goods or services at the time that the Canadian application is filed.

A claim based on an application or registration and use abroad does not have to be made at the time of filing, but must be made before the application is published for opposition.

Use in Canada is not a prerequisite to obtaining registration under this claim.