Canada (CA)
Latest News: 11-01-2012 (Newsletter Issue 16/12)Extension of Time Justification Online AvailableThe 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 03-12-2013 (Newsletter Issue 3/13)Elimination of Deposit Account Replenishment by Credit CardThe 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
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 RegistrableThe 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 RequiredCIPO 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 UpgradedThe 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 1953.
Trade-mark protection is obtained by registration. An unregistered trademark may be protected due to prior use (common law).
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 trade-mark 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.
Canada does not use any classification system.
Registrable as a trade-mark are all distinctive and graphically representable signs, such as words, acronyms, letters, numbers, devices, emblems, combinations or shades of colours, sounds, the three-dimensional form of a good or its packaging and any combination of the mentioned signs. Normally, you may not register a word that is only a proper name – neither yours, nor anyone elseʼs – as a trade-mark.
An exception may be made if you can demonstrate that the name has become identified in the public mind with certain wares or service (secondary meaning).
The following trade-mark types are registrable: trade-marks, 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 is possible via the CIPO website.
An application could be based on use in Canada, proposed use in Canada, making-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 certification registration being able to be issued.
Conventional priority is available.
Any number and variety of specific goods and services may be included in a single application as Canada does not use any classification system.
Local agent is not necessary if you have a Canadian address. The Trade-marks office will communicate to the Canadian address and not a foreign one. Appointing a local agent is the prudent way to deal but not compulsory.
A power of attorney is not necessary.
Foreign applicants do not need a domestic registration.
The trade-mark application must be based on use, proposed use, making-known and/or foreign registration and use.
Trade-mark registration usually involves: a (non compulsory) preliminary search (done by the applicant or his agent) of existing trade-marks, and also highly recommended, of existing trade names, corporate names and domain names, an application, an examination of the application by the
Trade-marks Office, the publishing of the application in the Trade-marks Journal, time for opposition (challenges) to the application, allowance, filing of the declaration of use without specimen if the trademark application has been filed on an intent-to-use basis, and finally, registration (if there is no opposition).
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 filed applications or registrations. Trade-marks not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use, based on sufficient relevant proofs to that effect.
The processing time from first filing to registration or first office action is approx. 14 to 18 months in typical cases. An existing registration could be extended to include additional wares and/or services.
National:
The opposition period is 2 months from the publication date of the application and could be extended at least one time unilaterally for three months.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
The statutory exclusive rights begin with the date of registration. A trade-mark registration is valid for 15 years from date of registration. The registration is renewable for additional periods of 15 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).
After three years from the date a Canadian trade-mark was registered, any party may request that the Registrar issue a Notice, under Section 45 of the Trade-Marks Act, to the registered owner to request proof that the trade-mark has been used in the previous three years with each and every wares and services listed in the registration certificate that are targeted by the Notice under Section 45. Failure to show use may conduct to the cancellation of the trade-mark, if no use can be shown, or specifically with regards to the wares or services for which there is no evidence of use.
The official fee is CAD 250.00 (approx. EUR 175.00) for electronic applications and CAD 300.00 (approx. EUR 210.00) in any other case. For the registration, an additional fee of CAD 200.00 (approx. EUR 140.00) is charged, including the issuance of a certificate of registration of the trademark without further fee.
Trademark Licence Agreement
A trademark licence may be granted orally since the Canadian Trade-Marks Act does not specify that a licence must be in writing. This might generate evidence issues in the context of litigation. It is permitted to license the use of unregistered trademarks. A proprietor can grant a licence in respect of only some of the goods or services for which the mark is registered. The sale of a registered trademark does not automatically terminate the licence. The Canadian Trade- Marks Act requires the owner of a trademark to exercise direct or indirect control of the character or quality of the wares or services.
Recordal
Since 1993, it is no longer compulsory to register licensees as the registered user provisions have been abolished. There is the voluntary option of recording the licence, but there is no prescribed form or content for a licence agreement. No further documents are required.
Effectiveness
The licence becomes effective and enforceable once at the effective date of the licence agreement between the parties. The licence is not required to be published.
Infringement Proceedings
If public notice is given of the fact that the use of a trademark is licensed use and of the identity of the owner there is a presumption that the use is permitted by the trademark owner. Generally, the licensee may join the proprietor in infringement proceedings. This is however subject to any agreement subsisting between an owner of a trademark and a licensee. Generally, the user may call upon the trademark owner to institute infringement proceedings, but this is subject to any agreement subsisting between the trademark owner and the licensee. If the proprietor refuses or neglects to institute infringement proceedings, then, after two months, the licensee can institute proceedings in his own name. The Canadian Trade-Marks Act makes the owner a defendant, should the licensee undertake infringement proceedings.
Remarks
Payment of royalties from a Canadian licensee to a foreign licensor may be subject to tax withholdings, which may vary based on the existence or not of tax treaties between Canada and the licensor’s country. Registration of the royalty remittances is not required.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
290,00 € |
80,00 € |
| Word Mark Search (identical) |
140,00 € |
30,00 € |
| Extended Search (word mark, company name, domain) |
520,00 € |
80,00 € |
| Device Mark Search (availability) |
330,00 € |
130,00 € |
| Trademark Owner Search |
190,00 € |
|
| Company Name Search |
290,00 € |
|
| Domain Name Search (extended) |
|
|
| i-Search (word mark availability + legal opinion) |
1.100,00 € |
300,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided: