France and Canada do not share a common process to register a trademark. Indeed, there are 3 different grounds that allow application for a trademark registration in Canada. Thus, the preparation and filing of a trademark in Canada are specific because it must be based on either use in Canada, or proposed use in Canada or solely on use and registration of the trademark in another country. Each of those grounds has a particular meaning. Applying for a trademark registration based on use in Canada means that the trademark has already been used in Canada, whereas basing an application on proposed use in Canada means that the applicant intends to use the trademark in Canada. Finally, the last ground implies that the applicant owns a registration and uses the trademark in another country. Those requirements impact the Canadian application process. The five most important stages are highlighted below.
The Canadian Trade-marks Act notably provides that: “a trade-mark is registrable if it is not confusing with a registered trade-mark”[1]. Thus, it is highly recommended to conduct a search in the Canadian Trademarks database to avoid any conflict with another previous trademark registration.
As soon as from filing, the applicant has to provide a list of the goods and services in association with which the trademark is intended to be used or has been used in Canada. In addition, if the application is based on “use”, the applicant has to provide the date of first use for each of the designated goods and services.
It is relevant to point out that not only the use by the applicant but also by a licensee is taken into consideration. Applicant must also note that use on goods doesn’t have the exact same meaning of use with services. Whereas the use on goods means that “the trademark must be associated with the goods at the time of sale, for example marked on the goods, packaging, labels, visible to the purchaser”; use with services means that “the trademark must be displayed in the performance of the services, or in advertising services and that the applicant is ready to perform the services, if requested”.
Then, the examination allows a trademark examiner to review the application and if needed, notify objections. Doing so, he determines if the trademark can be or not approved for advertisement in the Canadian Trademark Journal.
Those first steps are decisive. The applicant can amend his trademark application until its advertisement. Once this latter has been advertised in the Trademark Journal, opponents can object to the registration for two months from the date of the publication. To successfully prevent the registration of the trademark, a formal opposition can notably be grounded on the difference between the date of first use provided by the applicant and the actual first use.
If the application has not been opposed or if an opposition has been defeated, the Canadian Office issues a notice of allowance.
Finally, after the payment of the registration fee, the trademark will move from the “pending” status to the “registered” status. Plus, the trademark application for a proposed use in Canada will be completed by submitting a declaration of use.
A trouble-free trademark application can last around 15 to 18 months.
[1] Canadian Trade-Marks Act, s.12