WTR Yearbook 2012/2013 - A Global Guide For Practitioners (Canada Section)

1. LEGAL FRAMEWORK

   National law

   In Canada, trademarks are governed by several different statutes and regulations, as well as by the common law.

   Registered trademarks are governed by the Trademarks Act (RSC 1985, c T-13) and the Trademarks Regulations (SOR/96-195). Certain marks owned by the Canadian Olympic Committee are also governed by the Olympic and Paralympic Marks Act (SC 2007, c 25) and the Olympic and Paralympic Marks Regulations (SOR/2007-294). In addition, certain 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.

   Finally, unregistered marks, trade names and other business signs can be protected under the common law, while trade names and corporate names are governed by 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, the legislation introduced a comprehensive set of procedures for the protection of geographical indications for wines and spirits.

   Canada is not a member state to the Madrid Protocol and therefore the protocol has no application in Canada; nor is Canada a signatory to the Nice Agreement. Canada is facing increased pressure to align with these international agreements; the Canadian Intellectual Property Office (CIPO) last engaged in an open consultation about this issue in 2005.

2. UNREGISTERED TRADEMARKS

   Canada affords protection to both registered and unregistered trademarks and trade names, and other business signs – including logos, shapes and non-traditional trademarks (eg, colour). 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.

3. REGISTERED TRADEMARKS

   Formal requirements

   The formal requirements for an application are set out in Section 30 of the Trademarks Act. Canada does not use the international classification system, but requires a statement in "ordinary commercial terms" of the specific goods or services. In addition, there is a single filing fee. Applicants must identify at least one specific filing ground.

   Scope of protection

   Most trademarks and trade names consist of a word or a combination of words, although they can also comprise initials and numerals. A trademark can also consist of a design (or logo), a slogan or the shape of goods or their packaging.

   Although Canadian courts have held that colours applied to three-dimensional objects may be trademarks, colour alone cannot be registered.

   Until recently, CIPO did not permit registration of sound trademarks, taking the position that a trademark must be capable of being seen. However, in March 2012 CIPO issued a new practice notice permitting the registration of sound marks in Canada, following an appeal by MGM of the registrar's refusal to approve its application to register the sound of a roaring lion as a trademark.

   According to the practice notice, an application for the registration of a sound mark must:

   state that the application is for the registration of a sound mark; contain a drawing that graphically represents the sound; contain a description of the sound; and contain an electronic recording of the sound. CIPO has proposed amendments to the Trademarks Regulations that would introduce significant procedural changes, including the registration of non-traditional trademarks such as holograms, motion marks and marks applied in a particular position on a three-dimensional object.

   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:

   marks that are primarily or merely names or surnames; and words that are clearly descriptive or deceptively misdescriptive of the goods or services, their origin or the persons that created them, unless the applicant can show that such marks have acquired...