World Trademark Review Yearbook 2014/2015: A Global Guide For Practitioners, Canada

LEGAL FRAMEWORK

National law

Trademarks in Canada are governed by several different statutes and regulations, as well as by common law.

Both registered and unregistered trademark rights are defined in the Trademarks Act (RSC 1985, c T-13) and the Trademarks Regulations (SOR/96-195). Certain Olympic symbols are protected by the Olympic and Paralympic Marks Act (SC 2007, c 25) and the Olympic and Paralympic Marks Regulations (SOR/2007-294). In addition, provisions of the Competition Act (RSC 1985, c C-34), the Criminal Code (RSC 1985, c C-46) and the Precious Metals Marking Act (RSC 1985, c P-19) can pertain to trademarks.

In 2013 Canada introduced amendments to the Trademarks Act in Bill C-8, the Combating Counterfeit Products Act. If passed, Bill C-8 would introduce new border detention provisions and criminal sanctions for counterfeiting, as well as allowing the registration of a broader range of signs (eg, colours, smells, tastes and textures) and introducing other changes to trademark prosecution.

Unregistered marks, trade names and other business signs can also be protected under common law, while trade names and corporate names are governed by both the Trademarks Act and several provincial statutes.

International treaties

Canada is a signatory to the Paris Convention for the Protection of Intellectual Property, which provides for the right of priority on the basis of an application filed in one of the contracting states, and lays down common rules that all contracting states must follow.

Legislation to implement Canada's obligations under the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights came into force on January 1 1996. Among other things, this legislation introduced a comprehensive set of procedures for the protection of geographical indications for wines and spirits.

Canada is not a member state of the Madrid Protocol or the Singapore Treaty, and therefore the protocol has no application in Canada; neither is it a signatory to the Nice Agreement. Canada is facing increased pressure to align with these international agreements, and the 2014 Canadian Budget proposes to ratify or accede to the Madrid Protocol, the Singapore Treaty, the Nice Agreement, the Patent Law Treaty and the Hague Agreement. These treaties have previously been tabled in Parliament and will require amendments to the Patent Act, the Trademarks Act and the Industrial Design Act.

UNREGISTERED TRADEMARKS

Canada offers protection to both registered and unregistered trademarks and trade names, and other business signs – including logos, shapes and some non-traditional trademarks. The owner of an unregistered trademark, trade name or other sign may not only assert its rights over others (by way of a passing-off action), but also rely on these rights to prevent the registration by others of confusingly similar trademarks in an opposition.

REGISTERED TRADEMARKS

Formal requirements

The formal requirements for an application are set out in Section 30 of the Trademarks Act. Canada requires goods and services to be described in "ordinary commercial terms". In addition, there is a single filing fee. Applicants must identify at least one specific filing ground. All IP administration is handled by Canada Intellectual Property Office (CIPO), which includes the Trademarks Office the Copyright Office and the Patent Office.

Scope of protection

The Trademarks Act sets up a structure for trademark protection based on widely accepted concepts of what functions best as a trademark. The following generally cannot be registered unless the applicant can show that they have acquired distinctiveness as of the application filing date:

marks that are primarily or merely names or surnames; words that are clearly descriptive or misleadingly descriptive of the goods or services, their origin or the persons that created them; and three-dimensional (3D) shapes. However, if such marks have been already registered in the applicant's country of origin and are shown, by evidence, to be not without distinctive character in Canada, considering the manner in which they have been used and advertised, these marks may be registrable.

In addition, marks that are generic or primarily functional are not registrable. If passed, Bill C-8 would confirm that signs with a primary utilitarian function...