1. Bases for Application
A Canadian application may be based upon one or more of the following bases:
- Use in Canada (may include use by a named predecessor-in-title).
- Registration (or application to register) and use in applicant’s country of origin.
- Proposed use in Canada by the applicant or a licensee (the licensee need not be named). Proposed use is not available with respect to any wares or services with which the mark has been used in Canada. However, both actual use and intended use may be presented in the same application for different wares and services.
- Theoretically, making known of a trademark in Canada is a basis for an application, but fact situations rarely establish a sound foundation for alleging making known.
2. Items Needed to Obtain a Filing Date
Identification of the trademark: Word – Design – Sound.
If the trademark is a word mark (i.e., a word or words neither depicted in a special form nor in foreign characters nor containing accents other than French accents), we require the word or words in the same form (punctuated, spaced etc.) for which protection is sought.
If the trademark is a design mark, we require a good-quality black and white drawing of the mark, preferably in a conventional electronic format (e.g. pdf, tif, jpg). Where the applicant claims colour as a feature of the trademark, the application must contain a descriptions of the colour(s), that is readily visualized and clear.
If the trademark is a sound mark, we require: a drawing that graphically represents the sound; a description of the sound; and an electronic recording of the sound (in MP3 or WAVE format, limited to 5 megabytes in size, and not containing any looping or repetition of the sound).
List of wares and/or services. A single application may include both wares and services of different classes – there is no formal classification system in Canada. A very specific list must be presented, using ordinary commercial terminology. If the applicant is uncertain as of the filing date whether the list is complete, the list can include wording such as “and other related goods”, which will permit the applicant to amend later to expand the list.
If actual use is claimed, the date of first use of the trademark in Canada, for each general category of wares and services. The Trade-marks Office will accept a date identified as “since at least as early as” a stated year, or month and year. However, unless a precise date is provided, the date of first use will be deemed to be the last day of the indicated period. That is, if a month and year are provided, the date of first use will be taken to be the last day of that month and if only a year is provided, the date of first use will be taken to be the last day of that year.
Name and address of applicant and name(s) of any predecessor(s)-in-title who previously used the mark. Preferably state the jurisdiction of incorporation of a corporate applicant and any special status (e.g., trade union) of an unincorporated entity.
Particulars sufficient to identify any foreign counterpart registration or application relied upon (optional).
To obtain a filing date, there is no need for the applicant to execute any formal application papers. We can prepare the necessary application and execute it as agents.
3. Completion of the Application
Specimens of use are not required.
Registration and use in the applicant’s country of origin, may be asserted as a basis for Canadian registration at any time prior to the publication of the Canadian application. However, if an application contains such a foreign registration and use basis, a copy of the foreign registration (certified by the issuing office) must be filed (together with an English translation, unless the document is already in French or English) before the Canadian application will be approved for publication.
4. Paris Convention Priority
Convention priority may be claimed if the Canadian application is filed within six months of the first-filed Convention application.
IMPORTANT: Convention priority must be claimed at the time of application. Please provide us with the country, application serial number, and filing date of the first-filed application. If some of the foregoing information is missing at the time of filing, normally it can be entered later by amendment, as long as the claim for priority has been presented in the application as filed. There is no need to file a certified copy of the foreign application.
5. Licensees/Registered Users
Licensees or other users of the trademark need no longer be recorded as registered users of the mark. Canada has abolished its registered user system. However, various provisions of the Trade-marks Act apply to licensees; please consult us if further information is required.
6. Other Protection
The Canadian Trade-marks Act provides for the registration of certification marks (marks associated with a standard with which licensed users of the mark must comply) and distinguishing guises (a shaping of wares or their containers or a mode of wrapping or packaging the wares or their containers that serves to distinguish the wares or services of the applicant from the wares or services of others). Please consult us if further information is required regarding applications to register certification marks or distinguishing guises.
Nothing here written constitutes legal advice. The accuracy of what is written is not guaranteed. Please consult us about any specific matter on which you require legal advice.