CANADIAN TRADEMARK LAWYER:
"Enforcing and challenging trademark rights in Canada"
Enforcing Trademark Rights in Canada
Un-registered trademark rights may be enforced in Canada by way of a "common law passing off" action.
In the case of registered trademark rights, they may be enforced in Canada either by way of a "common law passing off"
action, a "statutory passing off" action and/or an "infringement" action.
Challenging Trademark Rights in Canada
In the event that one wishes to challenge a pre-existing trademark registration, two alternative routes are available:
1. Where a Canadian Trademark Registration is at least three years old, a request may be made to the Registrar of Trademarks
to issue a Notice pursuant to Section 45 of the Trademarks Act, requiring the trademark owner to furnish within three months
an affidavit with respect to the wares and/or services in the registration, providing satisfactory evidence that the
trademark was in use in Canada at any time during the three year period immediately proceeding the date of the notice
(or alternatively, the date when the trademark was last so in use and the reason for the absence of such use since
that date). In the absence of satisfactory evidence of use (or in the absence of evidence establishing a satisfactory
"special circumstance" which resulted in the absence of use of the trademark), the registration is liable to be expunged
or amended to include only those wares and services for which satisfactory evidence of use (or "special
circumstances" that excuse the absence of use) was provided.
2. Any person interested may make an application to the Federal Court of Canada to have a trademark registration amended
or struck out from the trademarks register on the ground that at the date of making the application to the Federal Court
of Canada, the entry as it appears of the trademarks register does not accurately express or define the existing rights
of the person appearing to be the registered owner of the mark.
In the event that one wishes to oppose a trademark application in Canada, one must, within two months of the advertisement
of the application in the Canadian Trademarks Journal, file with the Canadian Trademarks Office, an Opposition to the application (and pay the government fee),
which Opposition must set out, in sufficient detail to enable the applicant to reply thereto, the grounds of opposition.
A Statement of Opposition may be based on any of the following grounds that:
(a) the application does not conform to the requirements of section 30 of the Trademarks Act;
(b) the trade-mark is not registrable;
(c) the applicant is not the person entitled to registration of the trade-mark; or
(d) the trade-mark is not distinctive.
Thereafter, if the Registrar of Trademarks considers that the opposition raises a substantial issue for decision,
he shall forward a copy of the Statement of Opposition to the applicant in response to which the applicant files
a counter statement. Both the opponent and the applicant are given an opportunity to submit evidence (by way of
affidavit) and make representations to the Registrar, who will decide the merits of the Opposition.
(Please note: This site is not intended to provide legal advice and is not directed toward a particular fact situation. If you have a legal question, please consult with a trademark lawyer)
This site has been sponsored by the Canadian law firm of Kerr & Nadeau,
with offices located in Ottawa, Ontario, and Halifax, Nova Scotia, Canada.