Key Differences Between Canadian and US/EU Trade Mark Practice: Final Installment

The Canadian government recently 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.

This will eventually require significant changes in Canadian trade mark law and practice, but until that happens, important differences will continue to set us apart from current practices in the US/EU.

Here are ten further key differences:

21. Mistakes in Declaration of Use

If an error in a Declaration of Use was an innocent misstatement made in good faith, or the result of negligence with no intention to deceive, the registration can be amended.

22. Assignments

There is no requirement that trade marks be assigned with their associated goodwill, nor is there any prohibition against assigning applications based on proposed use.

23. Single register, national protection

There are no provincial registrations. Registration is national and is enforceable in every part of the country regardless as to whether the registrant has used the mark in every region.

24. Longer registration term

A Canadian registration is valid for 15 years and may be renewed for an indefinite number of terms.

25. Incontestability

A registration acquires a degree of incontestability after five years.

26. No mandatory requirement to prove use during term

There is no equivalent in Canada to the US section 8 proof of use requirement. A registration will remain valid for the full term unless it is successfully challenged for non-use under section 45 of our Act or by an expungement action in the Federal Court.

27. Section 45 proceedings

This is a relatively inexpensive way to remove unused marks from the register. If a registered mark has not been used for at least three years, anyone can request that the Registrar demand evidence of use from the owner, or exceptional circumstances which would excuse the absence of use, failing which the registration may be cancelled.

28. Simple renewal

Canadian rules for renewal of a registration are relatively straightforward. There is a six month grace period from the end of the term. Renewal can be done electronically and the confirmation is almost instantaneous. No evidence of use is required.

29. Licensing

Use by a licensee accrues to the benefit of the owner if the owner exercises direct or indirect control over the character and quality of the wares or services on which the mark is used.

It is advisable that the licence be in writing. The owner must not only have the right to control, but actually exercise sufficient control in order to meet the requirements.

There is no presumption that the use of a mark by a wholly owned subsidiary is controlled by the parent company. There must be some evidence of a licence and of actual control of the use of the mark.

30. Official Marks

These include marks which prohibit the adoption, in connection with a business, of any ‘badge, crest, emblem or mark’ which has been adopted and used by any ‘public authority’.

Official marks operate under a different set of rules from regular trade marks.

There is no public examination, advertisement or opposition. If the applicant is accepted as a public authority, the mark is given public notice as an official mark in the Trade Marks Journal.

Once the notice is published, no one else can adopt or use the mark, or any mark so closely resembling as likely to be mistaken for that mark, without the consent of the owner. There is no restriction on the scope of use, no use requirement, no maintenance or renewal requirement and no provisions for cancellation or revocation.

The effect is prospective only, ie, a pending application for a confusing mark which has not yet been allowed would no longer be registrable, but the applicant may continue to use the mark if its use predated the public notice.

The material contained in this article is for your general information and should not be taken as legal advice.


Tags: Article; Bennett Lee; Intellectual Property