by Graham Hood
Canada is a critically important market for brand owners, particularly for those looking to break into North America and capitalize on Canada’s strong trade relationship with the U.S. If your brand protection strategy does not include Canada, consider the top ten reasons to register your brand in Canada today:
- Canada is a vitally important market for brand protection.
Canada continues to play a major role in international trade relations, having most recently completed negotiations for the Comprehensive Economic and Trade Agreement with the European Union and the Trans-Pacific Partnership with 11 other Pacific Rim countries. Its strong trade ties with the U.S. continue to influence Canada’s cultural, economic and political landscapes, and are evident in its being among the United States’ largest suppliers of goods, with top imports in mineral fuels, vehicles, machinery and plastics in 2015. Similarly, Canada was the United States’ largest goods export market last year, with Canada being the leading trading partner of 35 states. Perhaps not surprisingly, Canadian consumers are regularly exposed to significant spillover advertising from the U.S., and are well aware of international brands as a result, making Canada a vitally important market for foreign brand owners looking to protect their brand across North America.
- Canada offers more bang for your buck.
Recent amendments to the Trademarks Act are not expected to come into force until late 2018, when the law will be revised significantly to adhere to the Nice, Singapore and Madrid agreements. Until then, a brand owner seeking to register a trademark in Canada may file a single application for a single, flat fee, regardless of how many classes of goods and services are covered by the application. Once the amendments to the Act come into force, the Trademarks Office is expected to charge applicants additional filing fees on a per-class basis. And with the recent depreciation of the Canadian dollar, there has never been a better time for foreign brand owners to register their trademarks with Canada’s Trademarks Office.
- Canada’s Trademarks Act is going to change. Significantly.
The upcoming changes to Canada’s Trademarks Act will open the door to potential trademark trolls, or squatters, that apply to register others’ trademarks to then hold them for ransom. Once the amendments to the Act come into force, an applicant will be permitted to register a trademark without using it anywhere in the world. As a result, a person without any bona fide intention of or interest in using a mark may register, and then sell (typically at great cost) the “rights” therein to the mark’s rightful owner. With the repeal of the use requirement, trademark filings for unused marks are expected to increase, leading to a cluttered trademarks register (an issue that is likely to be compounded when Canada adheres to the Madrid agreement and begins to accept international trademark applications). It is therefore critically important that brand owners review their trademark portfolios now, with a view to filing defensive trademark applications for unregistered marks in order to preempt trademark trolls’ bad-faith applications (and others’ international trademark applications).
- New types of trademarks will soon be registrable in Canada.
Canada’s trademark system will soon protect one of the widest arrays of non-traditional marks available to brand owners. When the amendments to the Act come into force, the Trademarks Office will begin to accept applications for so-called non-traditional marks, like colours (without delineated contours), holograms, moving images, scents, tastes and textures, which have become distinctive of their owners at the time of filing. These amendments may be especially valuable to brand owners in the apparel, film, and food and beverage industries, which often use non-traditional marks to distinguish their goods and services from those of others. In the meantime, brand owners are encouraged to file applications now for currently acceptable non-traditional marks, such as colours (as applied to goods) and sound marks, which do not currently require applicants to prove distinctiveness at the time of filing.
- A trademark registration can protect against future expansion by competitors into Canada.
A trademark registration can serve as both a sword and a shield. It entitles its owner to the exclusive use of the subject trademark in Canada in connection with the registered goods and/or services. By the same token, it also entitles its owner to prevent others from using the mark, or a mark confusing therewith, in Canada in connection with the same or similar goods and/or services. Furthermore, many non-Canadian brand owners use their respective marks in Canada without registering them, which can create serious problems for those seeking to enforce their trademark rights against others. Without a trademark registration, a brand owner is limited in its ability to prevent others from using a confusingly similar mark, and instead must rely on its common law rights and earned reputation in Canada, which can be costly and unpredictable to enforce.
- A trademark registration need not be used in Canada to enjoin the use of confusing marks.
In Canada, permanent injunctive relief can be obtained by a brand owner even if its mark is not in use in Canada. While the registration of a trademark that is not in use is vulnerable to summary cancellation, it is generally not so vulnerable when the registration itself is less than three years old. Furthermore, a nationwide injunction can be obtained even if the infringer is carrying on business in areas of Canada in which the brand owner is not using its trademark.
- A trademark registration may be recorded with Canada’s customs authorities to protect against the import and export of counterfeit goods and pirated copies.
With the recent coming into force of the Combatting Counterfeit Products Act (“CCPA”), Canada has hardened its stance against counterfeit goods and pirated copies. The CCPA has created a system whereby trademark and copyright owners may record their rights with the Canada Border Services Agency (“CBSA”), which will then detain any commercial shipments suspected of containing counterfeit goods or pirated copies bearing or containing the rights holders’ marks or works. The CBSA will also share with rights holders certain information about the shipments and their importers, so that rights holders may commence suitable proceedings in court. However, in order to take advantage of this new customs recordal system, it is necessary that a right holder’s marks be registered in Canada or be the subject of copyright protection, as unregistered trademarks cannot be recorded with the CBSA.
- A trademark registration permits a foreign trader to obtain a .ca domain name without having a physical presence in Canada.
The Canadian Internet Registration Authority (“CIRA”) is responsible for managing .ca domain names. But not just anyone may register a .ca domain name; CIRA has “Canadian presence requirements”, which persons who wish to register a .ca domain name must meet. However, a foreign trader that does not otherwise qualify under the requirements will be permitted to apply to CIRA for, and subsequently own, the registration of a .ca domain name if it also owns a Canadian trademark registration, provided that the applied-for .ca domain name consists of or includes the exact word component of the registered trademark.
- A trademark registration provides its owner with a suitable basis for a complaint under Canada’s own domain name dispute resolution policy.
Disputes over .ca domain names are governed by Canada’s own domain name dispute resolution policy (“CDRP”). Under the CDRP, a complainant may lodge a complaint with CIRA in order to recover a .ca domain name registered in bad faith if it can establish prior rights in and to a mark with which the .ca domain name is confusingly similar. A trademark registration obtained by the complainant prior to the date of registration of the domain name may readily serve to establish such prior rights.
- A trademark registration relieves its owner of the need to translate the subject trademark in the Province of Quebec.
Under the Quebec Charter of the French Language, a trademark appearing on a product, on its container or on its wrapping, or on a document or object supplied with it, or appearing on public signs and posters and commercial advertising for goods or services, must be translated into French in the Province of Quebec unless it is a “recognized” trademark. In practice, a trademark is deemed to be “recognized”, and may therefore be used in commerce exclusively in a language other than French, if it is the subject of a registration in Canada. Thus, a Canadian trademark registration may save its owner from having to modify significantly its products’ containers or wrappings and advertising for the Quebec market alone, thereby saving time and money in bringing its products to market.
For further information on the upcoming amendments to the Trademarks Act, or to apply to register a trademark in Canada, please contact a member of our firm’s Trademarks group.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.