In Canada the legal basis is the Trade Marks Act of 1953. The trademark registration system in Canada follows the “First to use” jurisdiction, which means that prior use of a trademark establishes right to a mark. In the “First to use” system trademark registration is not mandatory however it is advisable, because a trademark that is not registered may be difficult to enforce in case of for example an infringement.
A trademark application can be filed by either the applicant, or by a trademark attorney in Canada. In the case that the applicant is not a citizen of, or are not living in Canada, they can still file a trademark application but, a Canadian Trademark attorney must be appointed. Also, a local address for services must be provided. Furthermore, the trademark attorney can file a trademark application only if they are a citizen of, or are domiciled in Canada. The jurisdiction in Canada does not follow a classification system. This means that if a trademark (is or) will be used in several classes of goods and/ or services, one trademark application may cover numerous classes.
To complete the trademark application a statement of use must be provided. In Canada a Power of Attorney (POA) is not required to complete the application process, however it might be requested at a later stage. A pre-filing search is not mandatory in Canada, nevertheless it is highly recommended.
Once the trademark application is filed with the Canadian Trademark authority, the authority will conduct an official search with regard to prior trademarks. This procedure can take approximately four to six months. After the trademark has been searched by the Trademark authority, the trademark application process starts. The entire trademark application process from filing an application to trademark registration is about 12 to 24 months. This time period is for a normal and smooth prosecution, meaning without any oppositions.
The trademark application process in Canada begins with the Trademark authority conducting a formal Examination of the trademark application filed. This formal examination involves that the trademark application is examined on conformity with the filing requirements and on whether the descriptions are comprehensible. Additionally, the application is also examined on descriptiveness, distinctiveness, deceptiveness, and on whether there is any conflict with any earlier filed application or registration. After the examination of the trademark application filed, certain parts of the application are published in the Trade-marks Journal and online. The trademark application is published in Canada for opposition purposes and this period begins from the publication date. The opposition period is approximately two months, however it can be extended at least one time for three months.
If after publication in the Trade-marks Journal and online there are no oppositions, the applicant is granted exclusive rights to the trademark in Canada. A trademark registration is valid for 15 years in Canada and starting from the registration date. Moreover, a trademark is renewable for 15 years beginning from the date on which the trademark has been registered in Canada.