FILING CANADIAN TRADEMARK APPLICATION

1. Filing Procedure

Registration is obtained by the filing of an application in proper form and submitting the appropriate fee. No application is awarded a filing date until the fee is paid. Each application must only refer to one trademark. An application is next searched, and then examined by examiners in the Trademark Office. Applications are examined in chronological order of filing date, unless an applicant requests and the Office agrees to expedite. If approved, the application is advertised for opposition and, if unopposed or not successfully opposed, the trademark is registered. It is unusual, but not unknown, that more than one application may be filed to register the same trademark.

An application to register a trademark must be filed by the applicant or a duly qualified trademark agent acting on the applicant’s behalf. If the applicant is not a Canadian resident, a Canadian person or firm must be nominated to receive all correspondence and service of legal papers in respect of the application. The application is to be drafted in accordance with a form published by the Registrar, or in any other form so long as the same information is included therein. The format of the application is governed by the Trademark Regulations. The application can contain any number of wares and/or services, but cannot attempt to cover more than one trademark, or format of the trademark, contrary to the practices in some other countries. The Trademarks Office publishes a Wares and Services Manual: User Guide which outlines the policy of the Office with examples as to acceptable ways in which wares and services may be expressed in an application. The application should be filed along with a prescribed filing fee.

All applications are given an initial examination by the Formalities Section to ensure that the form and content are correct, at which time an application number and filing date being the actual date of filing, are assigned. Thereafter, the file is open for public inspection and will be examined by an examiner in the Trademark Office. Accelerated examination of trademark applications may be possible is a proper request is made to the Trademark Office outlining the facts that would justify advancement. Currently, because of the large backlog in the Trademark Office, it is difficult to convince the Office to expedite an application, absent possible litigation and/or domain name issues.

The examination by the Trademark Office is first directed to ensure compliance with the formal requirements as to the application, then the substance of the application is examined as to registrability of the trademark and as to confusion with any other copending application. The examiner, if objections are to be raised, will correspond with the applicant or his or her agent, who will be given an opportunity to make one or more written responses. The examiner will set a deadline to file a response. If no response is provided, the examiner can consider the trademark to be abandoned.

All correspondence to the Office in respect of the application shall include the name of the applicant, the application number, if one has been assigned, and the trademark. The Registrar requires the applicant to provide a translation into English and French of any words in any other language appearing in the trademark. The Registrar requires a transliteration of matter expressed in characters, other than the Latin characters or numerals, into Latin characters or Arabic numerals as the case may be.

If there are no objections, or if they are overcome, the application will be advertised in the Trademark Journal for opposition by any interested party and, if unopposed or unsuccessfully opposed, be allowed for registration and subsequently registered if the application is completed by fulfilling the technical requirements of the Act. If the examiner refuses to allow the application to be advertised, the applicant may ask for a review of the decision by the Registrar of Trademarks, who may also refuse to allow the trademark to be advertised. If the Registrar does refuse, an appeal lies to the Federal Court. In cases where there is doubt, the registrar may give notice to the owner of a registered trademark, with which the application may be alleged to be confusing, of his intent to advertise in case such owner may wish to oppose. Allowance of an application for advertisement does not indicate that the Registrar has decided that the trademark is registrable, but rather that he is not satisfied that it is not registrable.

A final fee is payable upon the mark being allowed for registration. In addition, if the application is based upon proposed use, a declaration attesting to commencement of use must be filed before the application will be processed to registration. In that regard, the Trademarks Office issued a practice notice in 1998 signalling a significant change in the ability of an applicant to obtain extensions of time to file a declaration of use. The Trademarks Office does not send out a default notice for failure to file a declaration of use.

2. Form of Application

An application to register a trademark must be in the prescribed form which is required to include the following: (a) Full and proper name of the applicant; (b) The trademark, and in the case where the trademark is a design, a drawing of the design in the proper format; (c) A statement in ordinary commercial terms of the wares or services; (d) In the case of application based on use in Canada the date of first use; (e) In the case of an application based on making known in Canada the date on which the trademark was first made known; (f) In the case an application based on an application (which matures into a registration) or a registration, and use in a foreign country, particulars thereof; (g) In the case of an application based on proposed use in Canada, a statement that the applicant intends to use the mark in Canada; (h) A statement that the applicant is satisfied that he is entitled to use the trademark in Canada in association with the wares or services described; and (i) In the case of certification mark, the standards defined by the applicant are required. In the case where the applicant’s trademark agent does not reside in Canada, an appointment of an associate agent who is resident in Canada, as a representative for service in Canada, must be included. In appropriate cases, a claim to priority based upon a previously filed application in a country of the Union may be made. This claim usually gives the applicant an effective earlier filing date in Canada. It is not a basis for registration itself. Such claim should be made at the time of the filing of the application.