CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
4.2 Trade Mark Register CIPO operates a public register of all trade mark registrations and applications which is available online . It is advisable to conduct a search before filing an application. However, CIPO searches by their nature cannot cover unregistered and unfiled trade marks. As a result, prospective applicants often choose to engage a trade mark agent to conduct a more robust search. 4.3 Term of Registration The initial term of a trade mark registration is ten years from the date of registration (15 if it was registered before 2019). Owners can extend the initial term by filing a renewal, with each renewal made after 2019 extending the term by an additional ten years. A renewal can cover all or only some of the goods and services listed in the registration. Additional - ly, the trade mark owner does not need to dem- onstrate continued use upon renewal. However, failing to use a registered trade mark for several years can lead to a summary cancellation pro - ceeding. If a trade mark is not renewed, the trade mark will be expunged from the register and cannot be revived. 4.4 Application Requirements A trade mark application can be filed by an indi - vidual, corporation, or other legal entity, and an application may include two or more appli - cants. It is not necessary to appoint a trade mark agent, although it is common practice to do so. It is advisable for foreign trade mark owners to appoint a Canadian trade mark agent, as CIPO does not send documents related to a trade mark application to international agents.
A trade mark application must include: • the applicant’s name and address; • representation and/or description of the trade mark; • a statement in specific and ordinary commer - cial terms of the goods and services associ - ated with the trade mark; • the Nice Classification classes of the associ - ated goods and services; • the application fee; and • any other requirements specific to the type of trade mark sought to be registered. If an application has a priority claim, the Cana - dian application should also include the date and country of the prior application as well as the priority application number. A list of the current filing fees associated with submitting a trade mark application can be found on CIPO’s website. 4.5 Use in Commerce Prior to Registration Since 2019, a trade mark applicant no longer needs to declare whether they have already used the mark in association with their goods or ser - vices or specify the date of first use. However, a registration may be subject to cancellation if the registrant fails to use the mark for three con - secutive years after registration. 4.6 Consideration of Prior Rights in Registration CIPO will consider whether a trade mark is regis - trable and search for potentially confusing third- party registrations and pending applications on the register. Canadian examiners also consider uses of unregistered marks available online and through public databases.
44
CHAMBERS.COM
Powered by FlippingBook