Further Key Differences Between Canadian and US/EU Trade Mark Practice

As noted in the first installment of this three part series, the Canadian government has tabled five international 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.

The is the first step to ratification and implementation, which will require significant changes in Canadian trade mark law and practice.  How significant?  We reviewed ten key differences between current Canadian and US/EU trade mark practice in our first installment.

Here are ten more:

11. Making known in Canada

There is an additional basis for registration if a trade mark has not been used in Canada but has become well-known here.

The threshold is high. The applicant must have used the mark in another member country of the Paris Union at the time of filing and the mark made known throughout Canada in association with the goods or services through distribution or advertising to a substantial extent.

12. Likelihood of confusion

Unlike some other systems – eg, the EU – where it is generally left to individual entities to monitor and oppose other marks which may be confusing, Canadian examiners have a duty to protect the public interest, conduct their own searches and will refuse applications if there is a likelihood of confusion with a prior mark of record.

13. Confusion test is bilingual

Canada has two official languages, English and French, so the average consumer may be English-speaking or French-speaking or bilingual.

This has to be taken into account when assessing the likelihood of confusion with a prior mark, especially the degree of resemblance between two marks in appearance, sound or the ideas suggested by each of them – ie, in both English and French.

For example, the marks RED HOUSE and MAISON ROUGE for ‘wine’ may not be confusing in appearance and sound in English, but could be confusing under the bilingual test because they mean the same thing in English and French.

14. Disclaimers not required

Applicants are no longer required to disclaim the right to the exclusive use of portions of trade marks which are not independently registrable, except for certain prohibited marks, eg, the eleven point maple leaf.

15. Examiners not bound by consent agreements

Canadian examiners are not bound by a consent or co-existence agreement between the owner of a cited mark and the applicant and have the discretion to maintain a refusal if an individual examiner believes there is still a likelihood of confusion.

16. No supplemental register

There is only one register in Canada. If a mark is found to be clearly descriptive, it will be refused unless it has acquired a sufficient level of distinctiveness to warrant registration.

17. Opposition period

The opposition period is 60 days from the date of advertisement in the Journal. An extension of three months is available on request.

18. No divided applications

There is no procedure in Canada for dividing an application to register the mark for certain goods or services and keep it pending for the remaining goods or services.

The applicant can proceed to registration for use of a mark on only some of the goods or services claimed in a proposed use application and abandon the rest. If it still wants to protect the mark for the remaining claims for proposed goods or services for which there has not been any use, it has to file a new application.

19. No specimen of use required

No specimen of use is required at the application, registration or renewal stages.

20. Lower costs and more relaxed time limits for filing Declarations of Use

The applicant has an initial time limit of three years from the filing of a proposed use application to file the Declaration of Use, but can get six month extensions of time for a further three years with reasons. The extension fees are also lower than in the US and other jurisdictions which follow the International Classification System.