Pursuant to section 2 of the Trademarks Act, a trademark is defined as “a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others”. Thus, to highlight its most important characteristics, a trademark is a sign that is employed to distinguish one’s goods or services from those of others. In addition, under section 2 of the Trademarks Act, a certification mark is also considered to be a trademark. By registering your trademark, you protect it under law from misuse by others, and you gain exclusive rights to use it throughout Canada for 10 years (a term that you can renew). Further information on trademarks can be found in the Trademarks Guide: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html

Pursuant to section 2 of the Trademarks Act, a certification mark is defined as a “sign or combination of signs that is used or proposed to be used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard from those that are not of that defined standard, with respect to: the character or quality of the goods or services, the working conditions under which the goods are produced or the services performed, the class of persons by whom the goods are produced or the services performed, or the area within which the goods are produced or the services performed”. Pursuant to section 30(2)(b) of the Trademarks Act, an application for a certification mark must include the standard that the certification mark seeks to guarantee. It is necessary, for the standard to be properly defined, for the general public to have an understanding of the precise nature of the standard. Thus, for example, the description of the standard can specify which qualified individuals may produce the goods or provide the services. In order to obtain the registration of the certification mark, the owner may not be engaged in any activity, other than the certification of the goods or services associated with the mark. Thus, the owner of the certification mark may not manufacture or sell the goods nor perform the services. Nonetheless, if the certification mark is only used in relation to goods, in these circumstances, it is permitted for the owner to use the mark as a regular trademark in association with the services offered. In other words, when using a certification mark to define a certain standard in association with goods and/or services, that same mark cannot be used to then distinguish said goods and/or services. An application for a certification mark must respect most of the same criteria as a trademark. However, pursuant to section 25 of the Trademarks Act, a major difference resides in the fact that a certification mark may be descriptive of the place of origin of the goods and services “if the applicant is the administrative authority of a country, state, province or municipality that includes or forms part of the area indicated by the certification mark, or is a commercial association that has an office or representative in that area”. Consequently, the owner of the certification mark must permit the use of the mark in associated with any goods or services that originate from this area. It should be noted that a trademark application could be amended into an application for a certification mark. In the same manner, an application for a certification may be amended into an application for a regular trademark.

A trade name is defined under section 2 of the Trademarks Act as “the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual”. A trade name (or doing business as, d.b.a.) does not inherently benefit from the same protections that a trademark does under the Trademarks Act, as stated at paragraph 47 of Superior Court of Quebec in Illico Communication Inc. c. Vidéotron Ltée, 2004 CanLII 7188 (QCCS). The same reasoning has been adopted in other court decisions, such as Centre sportif St-Eustache c. Québec (Procureur général), 2009 QCCS 3307, at paras. 24 and 25. However, if a trade-name is used in a manner similar to that of a trademark, meaning to distinguish the source of the goods and/or services associated with it, it may be registered on the trademark registry and thereafter, afforded the same rights.

(1) Trademarks help you distinguish your products and services from those of competitors and help identify you as the source; (2) Trademarks allow consumers to identify (by word, logo, slogan, packaging, or other indicators of origin) which product or service they would like to purchase or to avoid purchasing, as well as prevent confusion amongst consumers (or likelihood of confusion); (3) Trademarks are very effective against unfair competition and passing off; (4) Trademarks are good communication tools in that they allow consumers to easily select products or services amongst other similar products or services; (5) Trademarks are business assets, which can appreciate over time. They can be bought and sold, they can be pledged (as a security), as well as licensed (e.g., merchandising, endorsements and sponsorships, co-branding promotions, contests, etc.); (6) Contrarily to patents and industrial designs, trademarks are relatively inexpensive to protect. Once registered, they have a potentially infinite lifespan with the filing of renewals. Renewals can be filed every 10 years after registration in Canada; and (7) Trademarks allow businesses to most effectively utilize the Internet, and make use of ICANN (or UDRP) Internet domain disputes.

Pursuant to section 2 of the Trademarks Act, a trademark can be a sign. According to the same section, a sign can be “a word, a personal name, a design, a letter a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign”.

Yes, under section 2.1 of the Trademarks Act, it is possible to submit a trademark application with multiple applicants on the sole condition that they may only use the proposed trademark on behalf of all applicants.

Yes, first the goods and services must be classified correctly. To do so, the applicant must follow the Nice Classification System. The Nice Classification system is used internationally to classify the goods and services used in association with the proposed trademark. There are a total of 34 classes for goods and 11 classes for services. Under subsection 30(2)(a) of the Trademarks Act, each description of the goods and services must be drafted using “ordinary commercial terms”. In addition, under section 29 of the Trademarks Regulations, the description of goods and services must be completed “in a manner that identifies a specific good or service”. The highly technical nature of drafting a trademark description is why it is essential to seek assistance from trademark agent(s) like us.

Excluding professional fees, which vary from firm to firm, common government fees include: Application fee of $330 (includes the first class of goods or service to which the application relates as of the filing date)*; $100 for each additional class of goods or services to which the application relates as of the filing date; Renewal fee of $400 (includes the first class of goods or service to which the request for renewal relates)*; $125 for each additional class of goods or services to which the request for renewal relates; Statement of opposition fee of $750; Transfer of ownership fee of $100. *An additional $100 fee is required if not submitted online to the Office of the Registrar of Trademarks. A complete list of government fees for trademarks can be found here.

Since August 3, 2019, foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, must appoint and be represented before the United States Patent and Trademark Office (USPTO) by an attorney who is licensed to practice law in the United States. As such, Canadian trademark agents and applicants must appoint a U.S.-licensed attorney to represent them before the USPTO, increasing costs as a result. For more information, we invite you to visit: https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us As is the case for Canada, cost is attributed to the number of classes of goods and/or services, as well well honorarium (e.g., professional fees). For purposes of illustration, the USPTO offers two filing options. The TEAS Plus will cost $ 225.00 USD per class of goods or services. The TEAS Standard will require the applicant to pay $ 275.00 USD per class of goods or services.

Under section 46 of the Trademarks Act, a registered trademark must be renewed every 10 years. When the renewal is done online, the fee to renew for the first class of goods or services is $400.00. For every additional class of goods or services, the fee is $125.00. If the renewal is not submitted online, the fee to renew the first class of goods or services is $500.00. The $125.00 fee applies for every additional class of goods or services. If the renewal is not submitted with the appropriate fees within the prescribed period, the registered trademark will be expunged from the register. In addition, it is essential to employ the trademark. In fact, under section 45 of the Trademarks Act, if the Registrar is shown sufficient evidence that the trademark was not utilized in Canada within the first three years following its registration, the registered trademark will be expunged from the register.

Durand Lawyers brings Law & Business together. We are a law and business advisory firm specialized in intellectual property, business strategy, as well as civil and corporate law. We are uniquely positioned to help clients in emerging technology industries such as FinTech, SaaS, blockchain and cannabis, calling on both lawyers and experienced entrepreneurs to get the best possible outcomes.