Peering over the neighbours’ fence: key differences in trademark laws between Canada and the U.S.
May 31, 2018

By: Daniel Anthony & Jamie-Lynn Kraft

As trade talks between Canada and the United States dominate the headlines, it is hard to ignore the strong economic ties between these neighbouring nations. For example, the total volume of goods exported from the U.S. in to Canada exceeds total combined exports to Germany, France, the UK, Sweden and Italy. In addition, 90% of the Canadian population lives within 200 miles of the U.S./Canada border and is exposed to U.S. media and U.S. brands on a daily basis. Yet, many important U.S. based brands that are known or used in Canada are not registered in Canada.

While Canadian trademark laws and rules bear many similarities to those in the United States, there are also important differences to bear in mind when filing a cross-border application. These neighbouring jurisdictions will become more similar once the amendments to the Canadian Trademarks Act come into effect in 2019. This article outlines some of the most important differences today, and highlights how changes to Canadian IP laws will impact U.S. trademark and brand owners.

I.      Neighbourly differences

Descriptive marks. Both Canada and the U.S. prohibit marks that are descriptive, prohibiting “clearly descriptive” marks in Canada and “merely descriptive” marks in the United States. A descriptiveness objection may be overcome in both countries with evidence that the marks have been so used as to become distinctive. However, the United States also enjoys a Supplemental Register, which has no counterpart in Canada. The Supplemental Register allows for the registration of marks that are considered to be merely descriptive, provided that those marks have been used in the United States and are not considered to be generic. 

Specimens and statements of use. In Canada, there is no requirement to submit a specimen to support a claim of use. In contrast, in the United States, use must be supported by specimens evidencing how the trademark is used in commerce. Once the amendments to the Canadian Trademarks Act come into force in 2019, it will no longer even be necessary to claim or declare use prior to registration. This is a substantial departure from United States practice and will bring Canada more in line with European practice.

Proposed use versus actual use. If an application in Canada is filed on the basis of proposed use when there has already been use of the trademark in Canada at the time of filing, such application is vulnerable to opposition on the ground that the application was improperly filed. However, once the amendments come into force, this will no longer be an issue since applicants will not be required to claim whether or not they have used the trademark in Canada. In the United States, an application may be filed on the basis of intent to use, even if the mark has actually been used in the United States. The application can simply be amended when the time comes to file the Statement of Use.

Disclaimers. Prior to 2007, the Canadian Trademarks Office routinely requested that applicants disclaim portions of their trademarks that were considered to be not independently registrable (due to descriptiveness, for example). This requirement was disposed of in 2007. However, the United States Trademarks Office continues to request such disclaimers.

II.      Moving towards neighbourly harmony

Canada is completing the last steps necessary for implementing its new trademark law. The significant changes are due to come into effect in 2019 (see our February 12, 2018 IP Update). Many of these changes will bring Canada’s trademark laws and rules closer to those of American trademark practice. 

The following outlines some of the ways in which the neighbours are moving closer together:

Classification. In the United States, goods and services must be categorized according to the Nice classification system and there are additional filing, maintenance, and renewal fees based on the number of classes contained in an application or registration. In contrast, Canada does not currently adhere to the Nice classification system. Today in Canada, there is a single filing fee, a single registration fee, and a single renewal fee, regardless of the number of classes of goods and services contained in an application or registration.

Once the amendments come into force, Canada will adopt the Nice system, including implementing per-class fees for applications and renewals, which will generally result in an increase in government costs for brand owners. Additionally, in the last year, there has been a dramatic increase in multi-class applications, many by trolls or squatters seeking to obtain registration for marks across all 45 classes of goods and services (see our March 12 IP Update for more on this). The Canadian government has recently announced that it will introduce new legislation as a counter-measure against this activity.

Renewal. In the United States, the term of registration is 10 years, renewable indefinitely in increments of 10 years. The current registration term in Canada is 15 years, renewable indefinitely in increments of 15 years. Once the amendments come into force, the registration period in Canada will also be 10 years. However, unlike in the U.S., no specimens nor statement of use is required to renew a registration.

Divided applications. In the United States, an application may be divided into two or more separate applications for any reason. The applicant preserves the filing date for all the goods and services covered by the application. Currently in Canada, applications may not be divided. However, once the amendments come into force, divisional applications will be permitted in Canada.

Madrid. The Madrid Protocol is an international multilateral agreement for the registration of trademarks. The U.S. has been a signatory to this agreement for many years, which permits applicants to seek trademark registration in over 90 countries worldwide based on a single original application. Canada has now signed the Madrid Protocol and, once the amendments to the Canadian Trademarks Act come into force, Canadian applicants will have the option of using the Madrid Protocol where appropriate.

These differences in Canadian trademark procedures that exist today and the upcoming changes that will introduce similarities with U.S. trademark laws highlight the importance of having a strategy to manage cross-border portfolio matters. Above all, we recommend seeking advice now on Canadian trademark and filing strategies from an experienced Canadian practitioner.

If you have any questions about the above, please do not hesitate to contact a member of our firm’s Trademark 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.

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