Basis of a Canadian Trade-mark Application
A trade-mark application in Canada may be based upon one or more of the following:
· use in Canada, including use by a predecessor-in-title,
· proposed use in Canada, including by a licensee,
· use and registration abroad, or an application to register abroad, in the applicant’s country of origin,
· making known in Canada.
A single trade-mark application may rely on more than one basis; however, proposed use in Canada and use in Canada may not be relied upon for the same wares and/or services in a single trade-mark application.
If the trade-mark application is based upon proposed use in Canada, use must occur in Canada and a declaration of use must be filed before the trade-mark application issues to registration.
If the trade-mark application in Canada is based upon use and registration abroad, or an application to register abroad, in the applicant’s country of origin, a certified copy of the foreign registration must be filed together with a translation into French or English, prior to advertisement of the Canadian trade-mark application in the Trade-marks Journal. Furthermore, the trade-mark applied for in Canada must be identical to the trade-mark in the applicant’s country of origin, and it must be used outside of Canada in association with the wares and/or services stated in the foreign registration or application.
Canadian Trade-mark Application Requirements
A trade-mark may be obtained in Canada for a word, design or sound. In order to obtain a filing date for a trade-mark application in Canada, the applicant must provide the following:
· name of the applicant,
· address of the applicant,
· name(s) of any predecessor(s)-in-title,
· the trade-mark:
o Word mark: the word mark in the exact form for which protection is sought, including
spaces or punctuation. The word mark must not be in foreign characters, be
represented in a special form or contain accents, other than in the French
o Design mark: the design mark must be a black and white drawing of the mark (i.e., pdf,
jpeg, tif). Color claims in the design must be described in the application.
If required, our professionals can prepare formal drawings of the mark.
o Sound mark: a drawing that graphically represents the sound, a description of the sound
and an electronic recording of the sound (in MP3 or WAVE format, limited to
5 megabytes in size, recorded on a CD or DVD and not contain any looping
or repetition of the sound).
· description of wares and/or services defined using ordinary commercial terms. A single trade-
mark application may contain both wares and services of different classes as no class classification
system exists in Canada. The application may be amended after filing to limit the wares and/or
services; however, the amendment may not extend them.
· the date of first use in Canada, or the date of making known if the application is based upon making
known, for each category of wares and/or services must be provided at filing. If a precise date is not
known by the applicant, the date of first use will be deemed to be the last day of a stated month and
year, or year.
· for applications based upon use and registration abroad, or an application to register abroad, in the
applicant’s country of origin
o the registration or application number, the wares and/or services and the date of the
registration or application, and
o the wares and/or services that have been actually used abroad.
Priority under the Paris Convention
A Paris convention priority claim for the Canadian application can be made if the application is filed within six months of the first-filed Convention application. The request for priority must be claimed at the time of the Canadian application.
The country and date of any convention priority claimed must be filed with the Canadian application. The application number may be filed with the Canadian application, or at a later time period. Certified copies of the priority application are not required, unless requested by the Registrar.