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Registration of a Trademark

This month we are discussing the process for obtaining a registration and problems with the system.


Under the current Trademarks Act when an application for the registration of a trademark either has not been opposed and the time for filing a statement of opposition has expired, or has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall register the trademark in the name of the applicant and issue a certificate of its registration or, if an appeal is taken, shall act under the final judgment in the appeal. It is no longer required to file a declaration of use. Notices of allowance are no longer issued.


The Act also provides that the Registrar may, within three months after the registration of a trademark, remove the registration from the register if the Registrar registered the trademark without considering a previously filed request for an extension of time to file a statement of opposition.


It is possible to obtain a registration without ever using the mark. To avoid the problems this creates, the Government added section 53.2(1.1) to the Act to limit the ability of the owner of a registered trademark to obtain relief in an application alleging infringement of a mark not in use. The section provides that if, within three years beginning on the date of registration of a trademark, the owner of the registered trademark makes an application claiming infringement the owner is not entitled to relief unless the trademark was in use in Canada during that period or special circumstances exist that excuse the absence of use in Canada.


Comment

The possibility of obtaining a registration without use creates at least two types of potential abuse. First, using the registration in conjunction with the threat of a claim for infringement. Hopefully a judge would grant no relief in such a case absent compelling circumstances, but the threat remains. Second, using such a registration for blocking purposes. Expungement proceedings can be costly and uncertain. Summary proceedings under section 45 are not available until three years from the date of the registration.


If you have questions, please contact me at mckeown@gsnh.com.


Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370


These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

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