Actual Use in Canada
At the time of filing the applicant must provide the date of first use in Canada in association with the wares and services applied for. A wrong date can jeopardize the application. Proof of use is not required either at the application or registration stage, but it may become important if the trademark is challenged through an Opposition. “Use” has a specific meaning in the Canadian context and differs for wares and for services.
Proposed Use in Canada
An application can be made on the basis of proposed use in Canada, but there must be a genuine intention to do use the trademark, either through the applicant itself and/or through a licensee. If proposed use is claimed, it is important that the trademark not have been used prior to the filing date.
Making Known in Canada
Another basis for application and registration is that the applicant’s trademark has become ‘well-known’ in Canada. However, the requirements can be onerous, so this basis is rarely used.
Application or Registration in a ‘Union’ Country and Use Abroad
A Canadian trademark application can be based on a trademark application or registration made in the country of origin of the applicant. The country of origin is defined in the Trademarks Act as the country of the Union where the applicant has “a real and effective industrial or commercial establishment” or where it is domiciled or where it is a national.
The Trademarks Act defines “country of the union” as any country that is a member of the Union for the Protection of Industrial Property constituted under the Paris Convention, or any World Trade Organization (WTO) Member. European Union trademarks registered in the European Union Intellectual Property Office (EUIPO) are acceptable. Claims based on a World Intellectual Property Office (WIPO) international registration are also acceptable however the applicant must confirm that the international registration extends to the applicant’s country of origin.
The trademark applied for in Canada must be identical to the mark shown in the foreign registration. Therefore any discrepancy between the mark applied for in Canada and that registered abroad would mean the applied for mark is no longer the same one in the foreign registration. For example, a design mark applied for in Canada would not be supported by a certified copy that shows the identical features in a different arrangement, nor would it be supported by a certified copy that included a colour claim that was not included in the Canadian application.
However, differences in the registration which are due only to another office’s different way of showing word marks in standard characters are not relevant. For example, capitals and small case letters may be accepted where the practice in the registering country is to show marks only in capital letters.
Use Abroad
In terms of use abroad, the country need not be a country of the Union. If the trademark has not been used in a single country in association with all the specific goods or services, but has been used in one country in association with some of them and in another country in association with others, the names of two or more countries must be provided. Evidence of use is not required but the trademark must have been used abroad at the time of the Canadian application.
When a Canadian application is based on an application in or for a Union country, the mark will be examined but cannot proceed to advertisement until a certified copy of the registration is filed. This certified copy must be certified by the office in which it was issued, together with a translation into English or French if it is in any other language. A photocopy of the certified copy may also be submitted. Please note that a notarized copy of a foreign registration accompanied by an affidavit attesting to its authenticity is not acceptable.
Foreign Registrations Covering a Number of Trademarks
Where there is an application for a single trademark and the foreign registration consists of a series of design or word trademarks, the foreign registration will not normally be acceptabl as the trademark differs from that which was registered. However, this type of registration will be accepted from the countries of Australia, New Zealand, Singapore, the United Kingdom, Hong Kong, China and Bermuda since such a registration has been is considered to be the equivalent of a single registration for each of the trademarks listed on the certified copy.
Multiple Bases
It is permissible to assert multiple bases in the application for wares and services. However, one cannot assert both proposed and actual use in Canada for the same wares and services.
Priority Date
An applicant who is a member of a country of the Union can claim as the filing date in Canada the date of filing of the application in the Union country. This priority claim must be made within six months after the date on which the earliest application was filed for the registration of the same or substantially the same trademark for use in association with the same kind of goods or services