Trademark rights in Canada are established through use. This means that the person or company that first and continuously uses a trademark inside Canada is the one who has preferential rights over it. However, in practice, it is highly recommended that trademark owners register them. The main benefit of registering a trademark is to have presumption of ownership of the mark. This may prove useful in cases of infringement.
Although it is not necessary for a trademark to be in use in order to file it, it will be necessary that the owner make use of the trademark in the Canadian market before it is definitely registered. A declaration of use will have to be presented. For further information regarding this, please see our FAQ section at the bottom of this page.
Trademarks in Canada are registered through the Canadian Intellectual Property Office (CIPO).
Please note that by default, applications including a logo will be filed without color claim. This allows the trademark holder to use it in any combination of color. Upon request it is possible to claim color as a feature of the trademark. This will restrict its use to the colors claimed in the trademark application.
If you register a combined trademark (which includes both word elements and figurative elements) in Canada, the exclusive right to use the trademark is limited to a use of the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
Opposition actions against a trademark application must be presented within two (2) months from the date on which it is published in the Canadian trademark journal. The period to oppose a trademark may be increased to three (3) months upon payment of an extension fee.
Once the trademark has registered, the Canadian trademarks office will issue a digital certificate of registration. No hard copy of this certificate is issued.
The registered trademark in Canada will remain so for 15 years. Trademarks may be renewed every 15 years. If a trademark expires it may still be renewed during the grace period of 6 months after the expiration date.
If a registered trademark is not used for period of more than three (3) years, third parties may present cancellation actions on the ground of non-use. In certain circumstances non-use may be justified.
Canadian domain extension .CA: Persons or companies that are not nationals or residents of Canada as a general rule may not register a .CA domain extension (ccTLD). However, having a registered Canadian trademark will allow for foreign nationals and entities to register their .CA domains, irrelevant of whether or not they reside or have offices in Canada.
Check our blog for some tips on how to register a trademark in Canada.