This article is part one of a series intended to discuss the process of registering a trademark in Canada.
On first principle, Canada is a “first to use” jurisdiction.
Although the first applicant on record is entitled to registration, a third party can successfully oppose an application in case of prior use.
In Canada, anyone can file an application to register a trademark in respect of goods and/or services, whether or not they are already using the trademark. The requirement to declare or demonstrate use in order to secure registration has been abolished.
Notwithstanding the foregoing, the date of first use of a trademark remains very relevant in determining entitlement to registration upon third-party challenge. In these circumstances, an applicant will be denied registration if the subject trademark is confusing with an unregistered trademark that has been in use since before the application was filed.
In terms of requirements, the following will be necessary in order to file a trademark application:
- Name and postal address of the applicant. A postal address is the address at which mail can be received, as distinct from an actual street or rural address;
- A representation of the trademark being applied for;
- A statement in “ordinary commercial terms” listing the specific goods and/or services in which the applicant is using the trademark or intends to use the trademark;
- Classification of the goods and services according to the Nice Classification international system;
- A statement confirming that the applicant is using or proposes to use the trademark in Canada and is so entitled.
Requirement to List Specific Goods and Services in “Ordinary Commercial Terms”.
Firstly, specifications of goods and services must identify each specific good and/or service that the applicant is claiming (eg. ice-cream, yogurt and smoothies). Vague and overly broad specifications are likely to meet objection (eg. cold treats).
Goods and services are considered to be in “ordinary and commercial terms” when they are described as they normally would be in the trade (eg. catering services, bookkeeping services, chiropractic services, DJ services, hairdressing, legal services). Examiners will scrutinize statements of goods and services to determine whether they are described in terms that coincide with how other traders describe them.
The fact that goods and services appear to be straightforward or understandable, does not mean that they are described in “ordinary commercial terms”.
A representative listing of acceptable goods and services that are considered to be in “ordinary commercial terms” can be found in the Canadian Intellectual Property Office Goods and Services Manual (the “Manual”).
Trademark applicants should not feel bound to the specifications in the Manual. If they don’t adequately cover the intended goods and services, at the very least it can be used as a guide.
If ordinary commercial terms are unknown or cannot be found, the applicant should simply describe the goods and services in a clear and concise manner as much as possible. Generally speaking, overly technical, lengthy or ambiguous language is likely to meet objection.
Now that we’ve covered entitlement to registration and the basic application requirements, part two of this series will review the process that trademark applications undergo in Canada.
See you soon!