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07-11-2017 (Newsletter Issue 13/17)
Draft Trademark Regulations Open to Public Comment Until July 21
The Canadian Intellectual Property Office recently released its draft Regulations under Canada's new Trademarks Act. They are open to public comment until July 21, 2017. This is the next step to the enactment of the amended Trademarks Act.

The proposed amendments to the Regulations are intended to facilitate Canada’s adherence to three international trademark treaties, namely the Singapore Treaty, the Nice Agreement, and the Madrid Protocol. They also clarify procedures and time frames for the filing and prosecution of Canadian trademark applications, as well as for opposition and section 45 proceedings.

The proposed amendments will implement a number of key changes in Canadian trademark practice also impacting foreign applicants. For further information, please read the article of our Canadian Partner Joli-Coeur Lacasse Avocats here

Source: Joli-Coeur Lacasse Avocats, Canada


06-28-2017 (Newsletter Issue 12/17)
Feedback on Proposed Industrial Design and TMs Regulations Required
The Canadian Intellectual Property Office (CIPO) is seeking feedback on the proposed regulatory amendments to the Industrial Design Regulations, the Trade-marks Regulations and the Patent Rules.

The timeframe for the consultations are from:
- June 19 to July 14, 2017, on the proposed Industrial Design Regulations
- June 19 to July 21, 2017, on the proposed Trade-marks Regulations

The proposed Trade-marks Regulations draft which is designed to implement amendments to the Trademarks Act passed in 2014 and can be seen here, while the proposed Industrial Design Regulations can be accessed here

Comments can be sent to the email address 'ic.cipo-consultations-opic.ic@canada.ca', indicating in the subject line the Regulations to which the submission applies, i.e. Trademarks or Industrial Designs.

CIPO will make a consultation report available on their website following the close of the consultation period. All comments received will be considered public.

Source: www.ic.gc.ca


06-28-2017 (Newsletter Issue 12/17)
Consultation Phase on NAFTA Expanded
The Government of Canada has announced that they have expanded the online consultations with Canadians on the renegotiation of the North American Free Trade Agreement (NAFTA).

NAFTA includes a dedicated chapter (Chapter 17) on Intellectual Property (IP). As a result, the Government of Canada would encourage stakeholders with an interest in IP trade agreement rules to share their ideas, experiences and priorities on the modernisation of NAFTA by visiting www.international.gc.ca/nafta.

Alternatively, officials of the Government of Canada can be contacted via the email address 'Consultations-TMI@international.gc.ca'.

Source: www.international.gc.ca


05-31-2017 (Newsletter Issue 10/17)
Practice Changes / Colour as a Registrable Feature of Industrial Design
The Canadian Intellectual Property Office (CIPO) recently announced six changes to its Industrial Design Office (the Office) practices with the objectives of improving service to clients, reducing administrative burden, and modernizing our practices to align with international norms. The changes were based largely on feedback from the Industrial Design Practice Committee (IDPC).

The changes included the following:
- Computer-generated animated designs
- Colour as a registrable feature of an industrial design
- Reducing time limits to respond to office actions
- Search to assess originality where there is a priority claim
- New notices of possible refusal
- Delaying the registration of an application

Under the new practice, CIPO will accept color as registrable subject matter of an industrial design. In doing so, color will be permitted to be an additional feature in combination with the features of shape, configuration, pattern or ornament and any combination thereof.

Drawings or photographs filed in respect of an application for registration of a design that includes colour as a feature must be filed in paper form and in colour. Current technical limitations prevent the Office from accepting colour drawings or photographs in electronic form. The Office will scan the paper drawings or photographs to display them in colour on the online Industrial Design Database and in registration packages. In the event of a discrepancy between the colour in the paper file that was submitted to the Office and the colour displayed online or in the registration packages, the paper file will be considered to be the best representation of that colour.

More information can be accessed here

Source: www.ic.gc.ca


04-26-2017 (Newsletter Issue 8/17)
Modernised Trademarks Database Released
The Canadian Intellectual Property Office (CIPO) informs that a modernised Canadian trademarks database has been released designed to improve the database functionalities by offering:

- redesigned layout and navigation
- single search interface
- refined search capabilities
- separate bilingual search tab
- restructured trademark details

The database can be accessed here

Source: www.ic.gc.ca


04-26-2017 (Newsletter Issue 8/17)
Decisions on Opposition/Section 45 Proceedings Made Accessible Now
The Canadian Intellectual Property Office (CIPO) informs that decisions by the Registrar of Trade-marks on opposition and section 45 proceedings are available on Decisia.

Decisia is a web application for tribunals and boards, and is already used by several federal organizations to publish their legal decisions.

It will be possible to conduct exhaustive and advanced searches of decisions by the Registrar of Trade-marks with the web application. Also it will now be possible to do searches by member, hearing officer, application number, registration number and trademark.

To access the web application, please click here

Source: www.ic.gc.ca


03-29-2017 (Newsletter Issue 6/17)
Reform to Trademarks Act Further Postponed
The Director General of the Trademarks Branch of the Canadian Intellectual Property Office has advised that the sweeping and ambitious reforms to Canada’s Trade-marks Act are now expected to come into force in early 2019.

Source: Gowling WLG, Canada


01-25-2017 (Newsletter Issue 2/17)
CIPO To Start Inviting Classifications of Goods and Services In TM Applications
The Canadian Intellectual Property Office (CIPO) has been permitting applicants to voluntarily classify their goods and services in recently filed and pending applications. In addition, CIPO announced that it will shortly start inviting owners of existing trademark registrations to classify the goods and services contained in their registrations according to the Nice Classification System. Courtesy notices to this effect are expected to be delivered as early as this month to trademark owners whose registrations are due for renewal on or after January 1, 2018. Where the registration lists a representative for service, the notice will be sent to the listed representative. Where no representative is listed, the notice will be sent directly to the owner.

Owners of registered trademarks are not obliged to respond to these courtesy notices at this time and there is presently no requirement in Canada that goods and services be categorized according to the Nice Classification. However, once classification does become obligatory, goods and services in existing registrations will have to be classified before the registrations can be renewed and goods and services in new or pending applications will require classification before the applications can proceed to registration.

Source: Gowling WLG, Canada


01-25-2017 (Newsletter Issue 2/17)
Office Practices of Industrial Design Changed
The Canadian Intellectual Property Office (CIPO) announced changes to six industrial design office practices.

The changes will improve service to clients, reduce administrative burden, and modernize our practices to align with international norms.

The practice changes are related to:
- applications for protection of computer-generated animated designs
- colour as a registrable feature of an industrial design
- time limits to respond to office actions
- the search to assess the originality of an application where there is a priority claim
- the issuance of notices of possible refusal
- delaying the registration of an application

A fact sheet providing an overview of the changes is also available.

For more information, please click here

Source: www.ic.gc.ca


11-22-2016 (Newsletter Issue 21/16)
Non-French TMs on Public Signs to be Accompanied by French Description
The Quebec Minister of Culture and Communications has announced that proposed amendments to the regulations under the Charter of the French Language will come into force on November 24, 2016. The amendments are intended to ensure the presence of French language on the storefront of businesses that display non-French trademarks on public signs, while purporting to respect the trademark exception.

The amendments provide that where a non-French trademark appears on a public sign, such must be accompanied by a generic term or a description of the products or services concerned, a slogan or any other indication in French informing consumers and passersby of the products or services offered. An appropriate display would give a permanent visibility to French, similar to that of the non-French trademark displayed and also be legible together with the non-French trademark. However, the display in the French language is not required to be at the same place, in the same number, in the same materials or in the same size as the non-French trademark.

The new regulations will apply to all new signage as of November 24, 2016. For existing signage, the regulations provide a 3-year grace period for business owners to comply.

For more information, please check here.

In parallel, the Office québecois de la langue française has prepared two illustrative guides that will be distributed to all businesses in Quebec. The first guide specifically deals with the display of trademarks, including the obligations with regard to the public display of trademarks exclusively in a language other than French, while the second guide addresses the general linguistic obligations of businesses.

Source: Smart & Biggar/Fetherstonhaugh, Canada


11-22-2016 (Newsletter Issue 21/16)
Practice Notice on Geographical Marks Released
On November 9, 2016, the Canadian Intellectual Property Office (CIPO) released a practice notice in order to clarify its interpretation of paragraph 12(1)(b) of the Canadian Trade-marks Act when applied for evaluating the registrability of trademarks with a geographical name.

CIPO’s notice states that, in accordance with the 2016 Federal Court of Appeal’s decision in MC Imports Inc. v. AFOD Ltd., a trademark is clearly descriptive of the place of origin if the trademark, whether depicted, written or sounded, is a geographic name and the associated goods or services originate from the location of the geographic name. Therefore, such trademark could not be registered in Canada.

Furthermore, a trademark will not be registrable under paragraph 12(1)(b) if it is deceptively misdescriptive.

Finally, if the registrar determines that the trademark is a geographic name, the applicant will have to confirm to the CIPO the actual place of origin of the associated goods or services. The notice also states that the address of an applicant is irrelevant when evaluating the place of origin of the associated goods or services.

For more information, please see the article of our Country Index partner here

Source: Joli-Coeur Lacasse Avocats, Canada


06-28-2016 (Newsletter Issue 12/16)
Consultations on Proposed Changes to Official Fees
The Canadian Intellectual Property Office (CIPO) opens consultations on proposed adjustments to trademark and patent fees.

To address these changes, CIPO is now consulting on proposed adjustments to the trademark and patent fees and their related service standards. Under the User Fees Act, all new fees and services set by the Government of Canada must be established in accordance with the process set out in the legislation from the amendments to the Canadian Trademarks Act and Patent Act.

The Office welcomes feedback to July 5, 2016 on trademarks and patents.

Source: www.ic.gc.ca


03-02-2016 (Newsletter Issue 4/16)
E-Copies of Trademarks Documents
The Canadian Intellectual Property Office (CIPO) is offering a new service with respect to trademark, copyright and industrial design document requests. You now have the option to receive uncertified electronic copies (CD-ROM or email) of trademark, copyright and industrial design files. The new service complements an existing service for patent related documents.

Electronic copies can be requested via the web order form here. Once the confirmation of payment is received, CIPO sends an email or a CD-ROM within three business days. Fees for this new service are outlined on the Products and Services page.

Source: www.ic.gc.ca and Joli-Coeur Lacasse Avocats, Canada


02-02-2016 (Newsletter Issue 2/16)
CIPO Invites the Public for Consultation
The Canadian Intellectual Property Office (CIPO) informed that they will be consulting on various themes that will help to modernize the Canadian intellectual property regime on topics such as intellectual property regulations and laws, business practices and international harmonization.

The first consultation focusses on principles guiding the harmonization of substantive patent law. The public is invited to submit comments from January 19 to March 23, 2016.

For more information, please visit the consultations and discussions page here

Source: www.ic.gc.ca


11-11-2015 (Newsletter Issue 17/15)
Implementation of Trademarks Act Postponed
The Canadian Trademarks Office recently announced that the amendments to the Trademarks Act will not come into force until at least the beginning of 2018. It was initially believed that the amendments would be earlier.

Under the current Act, applicants need to file a Declaration of Use when they file an application on a basis of proposed use in order to obtain their certificate of registration. The new Act will eliminate this requirement. In the event that the Declaration of Use has not been filed yet, an extension of time needs to be requested until the new law comes into force.

For further information please check the article of our Country Index partner Joli-Coeur Lacasse Avocats here

Source: Joli-Coeur Lacasse Avocats, Canada


09-29-2015 (Newsletter Issue 15/15)
Modernization of IP framework in Progress
CIPO published on its website how the trademark landscape is changing. The intellectual property laws are being modernized, including the Trade-Marks Act. Specifically, Bill C-8 — Combating Counterfeit Products Act, Bill C-31 — Budget Implementation Act 2014 (which includes accession to the Nice Agreement, the Singapore Treaty and the Madrid Protocol) and more recently Bill C-59 — Budget Implementation Act 2015, which will allow Canada to be better aligned with international practices.

Further, starting from September 28, 2015, CIPO will begin to accept trademarks applications voluntarily filed with their goods and services grouped and classed according to the Nice Classification. Using the Nice classification at CIPO will be optional and non-mandatory until the coming into force of C-31.

For further information on the Nice classification please check the article of our Country Index partner Joli-Coeur Lacasse Avocats here

Check further information on Trademarks legislative changes and international treaties and Update to the trademarks online tools.

Source: www.ic.gc.ca and Joli-Coeur Lacasse Avocats, Canada


07-28-2015 (Newsletter Issue 12/15)
Renewal of CIPO's Online Applications Soon
At the end of July and end of August, the Canadian Intellectual Property Office (CIPO) will release revamped online applications as part of a series of planned improvements to modernize the online services.

The applications will be accessible to a wider range of people, easier to use, and will be optimized for mobile devices. While some applications are only being updated to a new look-and-feel, the following applications will go through more extensive improvements:

- Trademarks (Request to Enter a New Name on the List of Trademark Agents)
- Copyright (Filing a grant of interest, Request a certificate of correction, General Correspondence)
- Industrial Designs (Industrial Design E-Filing, General Correspondence)
- Patents (Filing Canadian Patent Applications, The Canadian Patent Office Record (CPOR), General Correspondence)

The Client Service Centre information officers are available Monday to Friday, from 8:30 a.m. to 5 p.m. (local time) to answer questions during the transition period.

Source: www.ic.gc.ca


07-28-2015 (Newsletter Issue 12/15)
Nice Classification Expected
The Canadian Intellectual Property Office (CIPO) has recently announced that, starting from this fall, it will be possible to file trademark applications using goods and services grouped and classed under the Nice Classification.

Online tools will be improved to enable the use of the Nice Classification. Key enhancements include:
- Redesigned layout and navigation of the Goods and Services Manual that will provide assistance in selecting the appropriate classification to apply to goods and services; and
- New and improved search capabilities, which will give the user the ability to search the database for marks filed within a particular class of goods and services and see if there is overlap in the same general category.

CIPO expects that the implementation of the Nice Classification will help applicants and the agent community with the transition from the current trademarks regime to the new provisions — coming into force with the accession to the Nice Agreement, the Singapore Treaty and the Madrid Protocol.

For more information, please also check the article of Micheline Dessureault, Joli-Cœur Lacasse Avocats from Canada.

Source: Joli-Cœur Lacasse Avocats, Canada and www.ic.gc.ca


10-14-2014 (Newsletter Issue 15/14)
Consultation to Modernize Canada's Intellectual Property
The Canadian Intellectual Property Office (CIPO) will be holding an official consultation on the report entitled Modernizing the IP Community from 9 October to 9 December 2014.

As part of the Government of Canada’s efforts to support innovation, significant efforts have been made to better align Canada’s intellectual property (IP) framework with international practices and reduce the administrative burden for Canadian businesses. CIPO has also been working to transform its services to more effectively support businesses’ innovative undertakings. These efforts have coincided with the ongoing interest of the IP agent community to deliver the best services possible to Canadian businesses.

Within this environment, CIPO and the IP agent community recognized the importance of modernizing the way in which they do business together to support the needs of Canadian businesses. A collaborative effort between CIPO and the IP professional community was initiated to examine and develop recommendations in three areas:
1. The maintenance and oversight of the register/list of trademark and patent agents.
2. The qualification and maintenance of patent and trademark agents on the register/list.
3. A values and ethics framework for trademark and patent agents.

CIPO is seeking views to assess the degree to which the recommendations contained in the final report, Modernizing the IP Community, meet the needs of the business community and the IP professional community.

For more details, please see the consultation document. For further information on the latest developments in the field of Canadian Intellectual Property, please access the article of our Canadian partner Joli-Coeur Lacasse Avocats here

For any questions regarding this consultation, please send an email to Konstantinos Georgaras (Email: OPIC-CIPO.consutlations@ic.gc.ca).

Source: www.cipo.ic.gc.ca


07-04-2014 (Newsletter Issue 11/14)
Changes to Canadian TM Act Expected
The new draft law (Bill C-31), encompassing the first major reform of the Canadian Trademarks Act in over 60 years, has now received the Royal Assent on 19 June 2014 and will thus become law without any further amendments.

Major changes have been made to the Law that will enable Canada to ratify, amongst other the Madrid Protocol, the Singapore Treaty and the Nice Agreement. Some of the various changes are expected that may negatively impact trademark protection strategies:

- Proof of use will no longer be required to obtain registration in Canada.
- Trademark protection duration will be reduced from 15 years at the moment to 10 years.
- As the Canadian Government implements the Nice classification, it is highly possible that the Canadian Government will base its government fees on each separate class.

For further information, please access the article of our partner Ms Micheline Dessureault from the law firm Joli-Coeur Lacasse Avocats here

Source: Joli-Coeur Lacasse Avocats, Canada


04-16-2014 (Newsletter Issue 7/14)
New E-Filing System Launched
The Canadian Intellectual Property Office (CIPO) has launched a new e-filing system on 31 March 2014. Applicants can submit new and revised online applications for ordinary trademarks, certifications marks and distinguishing guises via the new system.
The old system has been decommissioned. A user guide is available upon request. For further information, please click here

Source: www.cipo.ic.gc.ca


09-17-2013 (Newsletter Issue 13/13)
Expedited Examinations Abolished
A new Notice of Practice has been published on June 14th, 2013 by the Canadian Intellectual Property Office regarding requests for expedited examinations.

It has been decided that the Registrar will no longer consider and accept requests for expedited examinations, given that examination now generally occurs within six (6) months of the application.

This previous Notice of Practice on this matter was published February 23rd, 2000. This Notice of Practice is no longer available on the CIPO website. Back then, examinations could take up to 28 months, creating the need for expedited examinations. Requests for expedited examinations had to be in the form of an affidavit or statutory declarations. Since examination delays are much shorter now, expedited examinations have been abolished. The current turnaround time seems to realistically be between six (6) to eight (8) months.

Source: Source: Joli-Coeur Lacasse Avocats, Canada


07-16-2013 (Newsletter Issue 11/13)
New Trademark Examination Manual
The Canadian Intellectual Property Office has released the new version of its Trademarks Examination Manual. The new version can be accessed here

Source: Robic LLP, Canada


03-12-2013 (Newsletter Issue 3/13)
Elimination of Deposit Account Replenishment by Credit Card
The Canadian Intellectual Property Office (CIPO) announced that CIPO has been looking for ways to reduce the merchant fees associated with the acceptance of credit cards. To help achieve this goal, CIPO will be eliminating the option to replenish a deposit account by credit card as of April 1, 2013.

After April 1, deposit account replenishment can be completed by using one of the following payment options: on-line banking, wire transfer, cheque, money order, debit card or cash (in person at Headquarters only).

Credit card payments will continue to be accepted for individual services when payment is made electronically, or when made in person, by facsimile or by mail using the CIPO Fee Payment Form.

For more information on payment options, please click here

Source: www.cipo.ic.gc.ca


02-18-2013 (Newsletter Issue 2/13)
Online Banking Available
The Canadian Intellectual Property Office (CIPO) announced that CIPO's deposit account holders will be able to replenish their account via the online banking system of all major Canadian banks in February 2013.

This modern, convenient and flexible option will offer CIPO clients numerous benefits, including: system validation of the client number to reduce the chance of possible errors, minimal user fees per transaction, secure transmission, and storage of deposit account replenishment information. Detailed instructions will be provided once the online banking service is available

Use of online banking will be limited to clients who are currently registered to use CIPO's online electronic statements service to view their credit card and deposit account transactions. Clients who are not currently registered should contact CIPO's Finance Branch in writing for instructions on how to access their online electronic statements.

Source: www.cipo.ic.gc.ca


11-01-2012 (Newsletter Issue 16/12)
Extension of Time Justification Online Available
The Canadian Intellectual Property Office (CIPO) announced that a copy of the applicant's justification to support a request for extension of time to file a Declaration of Use is now available via the web application for registration of a trademark.

The justification can be previewed and printed prior to submitting it to the Office. The document will remain accessible through the Transaction Requests History page along with the Extension of Time acknowledgement notice.

For more information on this online enhancement, please contact the Trade-Marks Branch Business Services here

Source: www.cipo.ic.gc.ca


09-27-2012 (Newsletter Issue 14/12)
Deposit Account/Credit Card Statements
The Canadian Intellectual Property Office (CIPO) announced that it's clients can now access their deposit account and credit card statements securely on CIPO's website. Clients will now be able to manage and track their own IP service request financial activity through their online statements.

In order to view the online statements, CIPO's Finance Branch must be contacted in writing to link the deposit accounts and/or credit card account to the authorized Industry Canada User(s) in your firm. The name of your firm, deposit account number(s) if applicable, and Industry Canada username(s) need to be included. The request can be sent to cipo.finance.opic@ic.gc.ca

Source: www.cipo.ic.gc.ca


04-17-2012 (Newsletter Issue 6/12)
Sound Marks Now Registrable
The Canadian Intellectual Property Office announced in its Practice Notice dated March 28, 2012, that they are accepting sound-based trademark applications. Previously, CIPO took the position that sounds could not be trademarked.

The application for the registration of a trade-mark consisting of a sound should:
1) State that the application is for the registration of a sound mark;
2) Contain a drawing that graphically represents the sound;
3) contain a description of the sound;
4) Contain an electronic recording of the sound.

Where it is not clear whether an application is intended to cover a sound mark, the Office will ask the applicant for written clarification.

Where a sound mark is considered to be functional and/or clearly descriptive or deceptively misdescriptive, an objection will be raised pursuant to the provisions of the Trade-Marks Act.

New applications for sound marks may only be submitted by way of a paper application, and not through CIPO's online filing system. For instance, the Office can only accept a recording of the sound in MP3 or WAVE format, limited to 5 megabytes in size, and recorded on a CD or DVD. Other types of recording media and references to a hyperlink or a streaming location cannot be accepted.

Source: Joli-Coeur Lacasse Avocats, Canada


03-27-2012 (Newsletter Issue 5/12)
Fee Payment Form Required
CIPO reminds its clients to use the CIPO Fee Payment Form for all fee payments submitted to the office. This will ensure that the documents are processed efficiently and securely. The form can be downloaded here

CIPO also informs that the online trademark registration certificate is now accessible and available for repeated printing. For more information please click here

Source: www.cipo.ic.gc.ca


12-01-2010 (Newsletter Issue 17/10)
Fee Payment Methods Changed
The Canadian Intellectual Property Office (CIPO) implemented three changes concerning the process when accepting and/or treating fee payments.

1) Foreign Currency
CIPO will no longer accept foreign currencies as payment for any fees. This includes electronic funds transfers (EFT). As of December 1st, 2010, all fee payments must be made to CIPO in Canadian dollars.

2) Electronic Funds Transfers (EFT)
A contract was signed with the Bank of Nova Scotia for the management of all electronic funds transfers made for the Government of Canada. All electronic fee payments to CIPO should now be made through the above noted bank.

3) Credit Card Statements
Beginning December 1st, 2010, CIPO will no longer return credit card slips. However, CIPO will provide monthly credit card transactions summary report.



Source: www.opic.gc.ca

08-05-2010 (Newsletter Issue 13/10)
Database Upgraded
The Canadian Intellectual Property Office (CIPO) provides a database on its website that now includes better and more complete information concerning all active Trade-mark Opposition and Section 45 cases.

The Trade-marks Database now details the history of all actions taken by the Registrar in all stages of currently active proceedings including whether the Registrar has issued correspondence to the parties or has denied or granted an extension of time. This new information also includes details of a party's up-coming deadline in the proceeding.

To access the database please click here


07-06-2010 (Newsletter Issue 12/10)
Deadline for the Exclusive Use of Vienna Classification Postponed
The Canadian Intellectual Property Office (CIPO) has postponed the deadline for using exclusively the Vienna Classification to classify the figurative elements of a trademark until December 2010.

In order to help the migration to the use, a document will be prepared to illustrate how the Vienna classification will be applied and demonstrate the correlation between the previously used figurative headings and the Vienna classification.


Source: www.iloinfo.com

05-03-2010 (Newsletter Issue 10/10)
Use of Vienna Classification Exclusively
The Canadian Intellectual Property Office (CIPO) is exclusively using the Vienna Classification to classify the figurative elements of a trademark effective by June 7, 2010.

CIPO will end its double codification of figurative elements known as "figurative headings", a non-standardized classification scheme.

In order to help the migration to the use, a document will be prepared to illustrate how the Vienna classification will be applied and demonstrate the correlation between the previously used figurative headings and the Vienna classification.


Source: www.opic.ic.gc.ca

Legal basis is the Trade-marks Act of 1985. However, significant changes will likely come into force in 2018 including the implementation of the Madrid Protocol and the Nice Classification. Trademark protection is obtained by registration. An unregistered trademark may be protected by prior use (common law). However protection based on prior use only is limited.
The Canadian law is based on the principles of “common law”, i. e. official and juridical decisions are rendered on the basis of prior decisions and judgements on similar cases comparing all facts and merits of a case and taking into consideration all different common grounds.
Canada follows a first-to-use system for the determination of rights and a first-to-file system with respect to the examination of conflicting applications. A trademark is deemed adopted in Canada when it is first used or made known in Canada or, if this is not the case, at the time of the filing of the Canadian application for registration. However, use will no longer be a pre-registration condition once the legislative changes come into force.
Canada does not currently use any classification system but is in the process of implementing the Nice classification. However, since September 28, 2015, CIPO has begun to accept trademarks applications voluntarily filed with their goods and services grouped and classified according to the Nice Classification.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, acronyms, letters, numbers, devices, emblems, holograms, motion marks, combinations of colours, sounds, the three-dimensional form of a good or its packaging and any combination of the above mentioned signs. Note that colour by itself is not registrable however can be protected as a feature of a trademark. Normally, you may not register a word that is a surname only neither yours, nor anyone elseʼs – as a trademark. A combination of surnames or a surname with other elements could be registrable.
An exception may be made if you can demonstrate that the name has become distinctive in the public mind with certain goods or service (secondary meaning).
The following trademark types are registrable: trademarks, service marks, distinguishing guises and certification marks.
The application is filed at the Trade-marks Office of the Canadian Intellectual Property Office (CIPO) in Gatineau, Province of Quebec. Electronic filing via the CIPO website is possible and preferred.
An application can be based on use in Canada, proposed use in Canada, made known in Canada and/or registration and use abroad. However, if based on proposed use, such use must have begun in Canada prior to the issuance of the registration certificate.
Conventional priority is available.
A single application can cover multiple classes of goods and/or services as Canada does not currently use any classification system.
Local agent is not necessary if you have a Canadian address. The Trade-marks Office will communicate with and report to the Canadian address and not a foreign one.
If the applicant is applying for registration of a trademark in Canada but is living in a country other than Canada and has no address in Canada, it must appoint an agent and representative for service in Canada to whom the Registrar can send correspondence. However, representatives for service can only act for an owner of a trademark once it is registered.
A power of attorney is not necessary.
Foreign applicants do not need a domestic registration.
Trademark registration usually involves: a (non-mandatory) preliminary search (done by the applicant or his agent) of existing trademarks, and of existing trade names (not mandatory but highly recommended), corporate names and domain names; filing of an application, examination of the application by the Trade-marks Office, the advertisement of the application in the Trade-marks Journal for opposition (challenges) purposes, allowance, filing of the declaration of use without specimen if the trademark application has been filed on a proposed use basis, and finally, registration.
The examination by the Trade-marks Office includes an examination for inherent registrability and technical compliance with the Trade-marks Act, as well as potential conflicts with prior pending applications or registrations. Trademarks not deemed distinctive at the examination can be registered if distinctiveness has been acquired by use, based on sufficient relevant evidence to that effect.
The processing time from initial filing to first office action is approximately 6 to 8 months. It typically takes approximately 14 to 20 months from filing to registration. An existing registration could be extended to include additional goods and/or services.
National:
The opposition period is 2 months from the date of advertisement of the application and could be extended at least one time unilaterally for 3 months.
The statutory exclusive rights begin with the date of registration. A trademark registration is currently valid for 15 years from date of registration. The registration is renewable for additional periods of 15 years. However, once the legislative changes come into force, the registration period will be ten (10) years.
The grace period is 6 months (non extendable) from the date on which the Registrar issues the late renewal notice, which is sent to the owner and his agent, if any.

Further practical details are available in our publication on this topic here
After 3 years from the date a Canadian trademark was registered, any party may request that the Registrar issue a Notice, under Section 45 of the Trade-marks Act, to the owner of a registered trademark to request proof that the trademark has been used in the previous 3 years with each and every good and services listed in the registration certificate. Failure to show use may conduct to the cancellation of the registration in part or in whole, if no use can be shown with regards to the goods or services for which there is no evidence of use.

Further practical details are available in our publication on this topic here
The official fee is CAD 250.00 for electronic applications and CAD 300.00 for paper applications. For the registration, an additional registration fee of CAD 200.00 must be paid prior to the issuance of the certificate of registration.

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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here.
Search type First class Add. class
Word Mark Search (availability) 220,00 € 50,00 € 
Word Mark Search (identical) 90,00 € 0,00 € 

The Prices above are SMD Group Search Fees
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Country Survey
03-21-2017
Joli-Coeur Lacasse Avocats, Québec (Québec), Canada  

02-10-2016
Joli-Coeur Lacasse Avocats, Québec (Québec), Canada  

01-05-2015
Joli-Coeur Lacasse Avocats, Québec (Québec), Canada  

07-29-2013
Brouillette & Partners, Montréal, Québec, Canada  

06-28-2013
Joli-Coeur Lacasse Avocats, Québec (Québec), Canada  

01-11-2012
Joli-Coeur Lacasse Avocats, Québec (Québec), Canada  

06-21-2010
Benoît & Côté, Montreal, Canada



Joli-Coeur Lacasse Avocats



Micheline Dessureault

Micheline Dessureault
1134 Grande-Allée Est, suite 600
G1S 1N5 Québec (Québec)
Canada (CA)
Tel +1 418 681 7007
Fax +1 418 681 7100
micheline.dessureault@jolicoeurlacasse.com
www.jolicoeurlacasse.com

Founded in 1983, our firm has expanded considerably since its creation, placing it amongst one of the most important law firms in the province of Quebec, Canada.

Counting almost 100 lawyers, our firm has offices in Quebec City, Trois-Rivières and Montreal and has, amongst others, departments in intellectual property, international business law, business law, taxation, real estate law and insolvency and enforcement of security.

It is known for both the quality and affordability its legal services. Our accomplishments are in large part due to the competent, creative and service-oriented professionals who lend their hand to helping their clients and strive to go above and beyond demand.

Our team of professionals in the intellectual property area is renowned for its services and publications as well as for its conferences and seminars. Its members, whether they are lawyers, trademark agents or technicians, have a strong experience in Canada as in foreign countries. Counting on a sound network of contacts throughout the world, they are fit to assist you on intellectual property matters.

Our spheres of activity in Intellectual Property:
- Protection and management of intellectual property portfolios
- Trademarks
- Copyright
- Information technologies and Internet Law
- Patents and industrial designs
- Know-how
- Artistic heritage
- Licenses/technology transfer
- Research and development

Our services in International Business Law:
- Business accompaniment
- Legal and political analysis
- Creation of a subsidiary or branch
- Mergers and acquisitions
- Strategic alliances and partnerships
- Commercial agencies/sales offices
- Distribution
- Joint venture and co-development
- Exportation and importation
- Legal domiciliation
- National and international taxation
- Real estate
- Negotiation and drafting of various other international contracts
- Transnational dispute settlement, mediation, arbitration

We invite you to visit our website for further information regarding our firm and its specialists.

Micheline Dessureault, Lawyer and Trademark Agent, Director of the Intellectual Property and International Business Law Departments

Suzanne Antal, Trademark Agent, Assistant Director - Trademarks

Brouillette & Partners



Robert Brouillette

Robert Brouillette
1050, Côte du Beaver Hall, Bureau 1500
H2Z 0A5 Montréal, Québec
Canada (CA)
Tel +1 514 397 6900
Fax +1 514 395 8554
rb@brouillette.ca
www.brouillette.ca

Brouillette & Partners is a law and patent and trademark agency firm catering to innovators and entrepreneurs. Most of our clients are business builders, a majority of whom operate businesses using or developing technologies.

As a small to medium size firm, our clientele is very similar to the Brouillette & Partners profile: composed of diversified SME’s, entrepreneurs and innovators desiring to develop their businesses in Quebec, Canada and/or internationally. We are pleased to offer an international coverage through our network of associates located in most industrialised countries Established in Montreal, in the heart of the business community of technological developments and innovation, we offer a wide range of legal services, particularly with respect to business, intellectual property, and litigation. Brouillette & Partners seeks to remain accessible and close to its clients while offering exceptional service and ever-increasing expertise.

The Brouillette & Partners team is composed of individuals originating from various environments and having diversified experiences (lawyers, engineers, and marketers). This collective knowledge allows our firm to cover a wide range of practices and constitutes an important source for the innovative solutions we are able to offer our clients.

Canadian Intellectual Property Office (CIPO)
Place du Portage I
50 Victoria St., Room C-114
Gatineau, Quebec K1A 0C9
Canada, J8X 3X1
Tel +1 866 99 71 93 6
Fax +1 819 953 2476 or 6742
Mail cipo.contact@ic.gc.ca
www.opic.gc.ca
International calls: + 1 819 93 40 544