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Jan
26

Trademarks Across Borders: How do Canadian and US TM Procedures Differ?

Canadian and US trade-mark procedures have much in common, but there are also many differences. For this reason, it is important to have trade-mark professionals on both sides of the border to assist you in navigating each country’s laws. This post will highlight a few of the key differences between US and Canadian TM prosecution.

Fewer Fees!

Canada, unlike most jurisdictions, does not require that the wares and services be divided into classes, with fees payable for each. Only one application fee is payable, no matter how lengthy or diverse the listing of wares and services.

More Fees?

Unlike the US, the Canadian TM Office requires payment of a CDN $200 registration fee at the end of the process.

Classes

Speaking of classes, don`t expect that the Canadian Intellectual Property Office will accept the list of wares and services in a US registration. The Canadian Trade-marks Office demands a relatively high standard of specificity. Examiners will reject terms such as ”appliances”, “apparatus” or “equipment” as too vague, notwithstanding any additional descriptions, and is exceedingly picky about “software”, among other things. Nor should you expect to claim general categories of foodstuffs. “Juices” or “dips”, are likely to be met with a request that you specify what kind. Don`t even think about using the word “including”. In short, be prepared to amend your wares and services listing.

One Register Undivided

In Canada, there is only one TM register and it is national in scope. There are no provincial registers nor is there any “Supplemental Register”.

One Application, Also Undivided

In the US, an applicant may split an existing application based on grounds. For instance, if the original application includes elements of both “prior use” and ”intended use”, the applicant may “split off” a separate application from the original covering the “prior use” wares and services. In Canada, that is not possible. An applicant may delete wares and services, but may not “split them off” except by filing a whole new application.

Grounds for Application

In both countries, trade-mark applications may be based on (i) use of the mark in commerce (ii) proposed or intended use of the mark in commerce, or (iii) registration in a foreign jurisdiction (albeit in Canada, this ground also requires actual use in the foreign country). In Canada, a trade-mark application may also be based on the marks having been “made known” in Canada, i.e. that the fame of a mark in the foreign jurisdiction extends across the border into Canada.

Opposition Period: Double Time

In Canada, applications may be opposed for up to 2 months after advertisement in the Canadian TM Journal, whereas the opposition period in the US is 30 days after publication.

No Evidence Necessary

In Canada, TM applicants are not required to file specimens in order to secure a TM registration, nor is there any automatic requirement to file evidence of use in order to maintain the registration. In the US, a trade-mark owner must file an affidavit of use between 5 and 6 years after registration, and at the 10-year anniversary. In Canada, the only time evidence of use is required is in the event of a third party launching a cancellation proceeding.

The Colder the Climate, the Longer the Term

In Canada, a trade-mark registration lasts for 15 years and may be renewed for 15 year periods. In the US, registrations last only 10 years.

Parting Thoughts

If you are considering registering trade-marks in both the United States and Canada, be aware that each country has unique elements to its trade-mark registration procedure: what may fly in one country may be grounded in another. At Symbus, you have the benefit of experienced counsel in both countries to help you navigate the divide.

About the author

Lisa James

Lisa C. James, LLB LLM is a Canadian corporate and intellectual property lawyer, with expertise in the areas of trademarks, copyright, and internet law, as well as strategic business counseling. She serves both the public and private sectors, including businesses across a variety of industries, government bodies, educational institutions and not-for-profits. Lisa has assisted litigation counsel as an intellectual property consultant in cases at all levels including the Supreme Court of Canada and the appellate courts of three Canadian provinces. Lisa's law practice is distinguished by a combination of high quality legal work and personal service. Lisa is pleased to lend her expertise to US clients looking to expand their brands and market presence into Canada.