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Registering Your Trademark in Canada: What Are the Key Elements to Consider When Filing Applications Under the Madrid Protocol Designating Canada?

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Trademarks Bulletin

The Madrid Protocol came into effect in Canada on June 17, 2019. Foreign businesses can now select Canada as a jurisdiction to protect their trademarks. This article is the second in the series on the Madrid Protocol and deals with filings made by foreign companies in Canada.

View our first article on Canadian filings abroad, "Registering Your Trademark Abroad: Is the Madrid Protocol the Best Strategy?"

It’s Best to Plan Ahead

The examiner’s most frequent objections result from: (i) an inadequate description of the goods and services; (ii) the likelihood of confusion with another trademark on the register; and (iii) a lack of distinctiveness.

(i) Specificity of the Wording

Unlike some jurisdictions, Canada is relatively demanding in terms of the specificity of the description of goods and services. Such terms as “Accessories,” “Equipment/Materials,” “Apparatus,” “Systems” and “Products” are generally not considered acceptable, and class headings are not sufficient. The Canadian examiner will require that the goods and services be described in ordinary commercial terms.

For example, since “hygiene products” is not an acceptable term, the examiner will require clarification as to which products are covered. It will be necessary to indicate, “hygiene products, namely bandages.” In the case of software, the function of the software should be specified and, if not obvious from the function, its field of use as well. Medical or pharmaceutical products will need to specify the disease, group of diseases or type of disease, disorder or condition to be treated, or indicate the specific type of drug.

The Canadian Intellectual Property Office (CIPO) has made its Goods and Services Manual available online.

This free and living document contains pre-approved terms; the manual is not exhaustive, however, featuring few terms used in emerging or technological industries. For example, in some areas such as cryptocurrency, artificial intelligence and non-fungible tokens, the options for acceptable terms are limited or have not yet been determined by CIPO. It is possible that the examiner may object to the description of certain goods and services because they are new to the marketplace, in the belief that these terms are not used in the normal course of trade.

This specific situation in Canada confirms that it is in your interest to involve your trademark agent as early as possible in your trademark protection strategy so that your applications are as “acceptable” as possible, thereby avoiding objections that would delay the process. If you give us details as to what the trademark will be associated with, we will be able to recommend acceptable terms and thus reduce the risk of receiving objections based on lack of specificity.

(ii) Confusion

Before designating Canada in your international application, we recommend that you conduct an availability search. This will allow you to check whether the trademark is available for use and registration. The process for filing an application under the Madrid Protocol designating Canada will follow the same examination steps as if you had chosen to proceed through a national filing. In Canada, the concept of confusion is evaluated in terms of French and English-speaking consumers. In other words, a trademark in French could be confused with a trademark in English, even though it may sound and look completely different. You will therefore need to carry out the availability search in both French and English.

(iii) Lack of distinctiveness

The Canadian examiner may object to an application for registration on the basis that, in his or her preliminary opinion, the trademark has no inherent distinctiveness. Usually, if the examiner considers the trademark to be clearly descriptive, there will also be an objection based on lack of distinctiveness – but sometimes this objection is made alone. Under current administrative practice, the examiner will consider whether other merchants would want to use your trademark. We can assess the distinctiveness of your trademark and your chances of success in the event of a possible objection. We have had a number of successes with this type of objection, either through argumentation or filing the required proof of distinctiveness.

Waiting and Waiting...

To the extent that Canada has already been designated and the application is pending examination, you may wish to seek the opinion of a trademark agent as to whether certain options are available to accelerate the examination of your application. As there are currently delays in the examination process, an initial examination report or approval for publication is sent towards the end of the 18-month deadline provided for by the Madrid Protocol.

As of May 3, 2021, CIPO will accept requests for accelerated examination based on limited, pre-established grounds. Due to the long examination time in Canada, it may be advantageous to check whether your international application that designates Canada qualifies for this accelerated examination.

Hurry Up and Act!

It is important to remember that CIPO will send all its notices and notifications to the agent named in the international application; so be diligent in forwarding any examination reports to an official Canadian agent as soon as possible. Once this agent has been appointed as an agent with CIPO, he or she will be able to provide you with recommendations and prepare a response to the examination report within the required time frame.

For further questions regarding the Designation of Canada in applications filed under the Madrid Protocol, we invite you to consult our Frequently Asked Questions.

Stay tuned for our upcoming articles in the Madrid Protocol series!

If you are experiencing difficulties with filing, registering or managing your trademarks in Canada or internationally, please contact us. Our Fasken team has solid experience in managing national and international trademark portfolios and can provide you with the appropriate assistance.



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