U.S. Parties Seeking to Register Their Marks in Canada Currently Face Increased Delays and Added Potential Bars to Registration
O Canada. Ohhh, Canada! – Delays and Restrictions on Trademark Registrations
With the assistance of local Canadian counsel, we frequently assist U.S. parties that use their marks in Canada to pursue registrations for their marks with the Canadian Intellectual Property Office (CIPO). That process changed fairly significantly when revisions to Canada’s Trademarks Act took effect in June 2019. The most obvious changes, relating to new requirements for identifying and classifying goods and services, lengthened the registration process. Add in circumstances relating to COVID-19, and delays in Canada have become the thing of which legends are made. Indeed, CIPO is currently taking approximately two years for the initial review of an application.
Ohhh (Canada), but there is more!
Below are five common issues U.S. parties may now encounter when seeking to register their marks in Canada.
A Canadian Examiner will initially refuse registration of any mark if the Examiner determines the mark possesses no “inherent distinctiveness.” This objection will be raised in any case in which the Examiner already objects to the mark on the basis of descriptiveness, geographic origin, or surname—even if the Examiner finds only a single use of the word as a surname. This approach regarding surnames is a significant departure from previous practice, which generally required the Examiner to find at least 25 uses of a word as a surname before raising a surname objection. Further, an Examiner may make a finding of no “inherent distinctiveness” for any mark consisting of one or two letters or numbers.
In response to such a refusal, an applicant can submit an argument that its mark has some inherent distinctiveness. However, if unsuccessful in that endeavor, the only way the applicant could gain registration for its mark in Canada would be to show that the mark acquired secondary meaning throughout Canada as a consequence of the owner’s use of the mark for the three- to five-year period prior to the date the applicant filed its Canadian application for the mark.
The extremely high burden of proof required to show that a mark has acquired secondary meaning could require the expenditure of significant time and resources. At a minimum, the applicant will need to provide evidence in the form of an affidavit, sworn to by a knowledgeable person for the applicant, setting out how the applicant made the Canadian public aware of the mark in connection with each of the listed goods and services in each geographic area. (A “geographic area” is typically identified by province.) Sales and advertising figures, broken down by geographic area, are to be provided (although it may be possible to protect the applicant’s confidential information by providing lower figures and indicating that the actual figures are in excess of the figures shown). In addition, examples of use must accompany the affidavit.
If an applicant cannot provide satisfactory evidence of its use of its mark throughout Canada during the requisite period, the resulting registration could be geographically restricted to those places where the applicant was able to provide sufficient evidence of use during that period.
Canada has long provided protection for official marks that are owned by “public authorities.” Contrary to what many had hoped, the revisions to Canada’s Trademarks Act that took effect in June 2019, provided no real changes to this issue. Thus, it is still the case that entities deemed to be “public authorities,” and universities, can obtain special protection for official marks that they adopt. Once such a mark is published, no other party can register a mark that closely resembles that published official mark for use with any goods or services, without the consent of the official mark holder. That is, the test to determine registrability in such cases is not “likely confusion.” Rather, it is “resemblance,” which includes resemblance in sound, meaning or visual appearance. The remedy is to obtain consent from the “public authority.” Fortunately, some parties are good about consenting. Unfortunately, others require onerous agreements or even financial payment.
Canada’s Trademarks Act no longer requires a statement of use of a mark in order to obtain registration for the mark. Thus, an applicant may apply for and register its mark for use with any or all goods and/or services. Since a mark may not be challenged for non-use for three years from the date of registration, such newly registered marks may now bar legitimate trademark users from gaining registrations for their marks. Also, unlike in the U.S., the Canadian trademark owner need not file evidence of its continued use of its mark at a later date. Consequently, trademark “trolling” is likely to become more common.
CIPO strictly requires that an applicant provide its descriptions of goods and services in “ordinary commercial terms.” This often results in an applicant’s debate with an Examiner over whether a specific “industry accepted term” constitutes an “ordinary commercial term.” Also, CIPO follows WIPO’s guidelines on Nice classification of goods and services. Thus, the manner in which goods and services are classified in the U.S. is not likely to sway a Canadian Examiner if WIPO’s guidelines suggest something different. Moreover, the Canadian Examiner has the final word on classification.
CIPO applies the “when sounded” test when assessing the registrability of marks consisting of words with design features. Specifically, if the words included with a mark would be deemed descriptive (and therefore, unregistrable, without something more), the added design features may not overcome a descriptiveness objection, depending on what the design features are. For example, the drawing of an “orange” for a mark that includes the term FLAVORFUL for use with orange juice, may not suffice. Likewise, the mere embellishment of or to a specific typestyle used for the word FLAVORFUL, may not suffice. Rather, the design features are not to be descriptive of the goods/services offered with the mark, and they must be at least as prominent as the word portion of the mark. If the Examiner finds the design features do not meet this test, the Examiner may well determine that the mark, “when sounded,” remains descriptive.