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What’s Included in a Trademark Application - Part II

A Representaion or Description

The requirement to provide a “drawing” has been replaced with the broader concept of a “representation” or “description” that clearly defines the trademark. When a representation is filed, the Regulations specify requirements including the number of views (e.g. to show a three-dimensional shape from different sides), the size of two-dimensional representations allowed, and methods of representing three-dimensional shapes and colours.


The Filing Date

The filing date of an application for the registration of a trademark in Canada is the day on which the Registrar has received all of the following: an explicit or implicit indication that the registration of the trademark is sought; information allowing the identity of the applicant to be established; information allowing the Registrar to contact the applicant; a representation or description of the trademark; a list of the goods or services for which registration of the trademark is sought; and any prescribed fees. The priority of the application will be determined by this date or the date of first use, whichever is the earlier.


CIPO Fees

The application and registration fees have been merged into one application fee, which includes the fee for the first Nice class of goods or service plus an additional fee for each additional Nice class of goods or services found in the application at the time of filing. If the examiner determines that there are more Nice classes than were identified at the time of filing, the applicant will be required to pay the additional fees (or, conversely, could request a refund if the examiner determines there are fewer classes). An applicant must pay the additional fees and cannot delete the relevant goods from the application. 


Amendment

An application for the registration of a trademark may be amended before the trademark is registered but there are significant limitations on the matters that can be amended.


Standard Characters 

An applicant who seeks to register a trademark that consists only of letters, numerals, punctuation marks, diacritics or typographical symbols, or of any combination of them, without limiting the trademark to any particular font, size or colour, must 

(a) file a representation under paragraph 30(2)(c) that consists only of characters for which the Registrar has adopted standard characters; 

(b) include in their application a statement to the effect that they wish the trademark to be registered in standard characters; and 

(c) comply with any prescribed requirements. 


Non-Traditional Trademarks 

If the trademark consists exclusively or primarily of one or more of the following signs: 

(i)the three-dimensional shape of any of the goods specified in the application, or of an integral part or the packaging of any of those goods, 


(ii)a mode of packaging goods, 


(iii)a sound, 


(iv)a scent, 


(v)a taste


(vi)a texture, 


(vii)any other prescribed sign 



an applicant must furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application for its registration. The Registrar shall, having regard to the evidence adduced, restrict the registration to the goods or services in association with which, and to the defined territorial area in Canada in which, the trademark is shown to be distinctive. These requirements are comparable to those required previously for a mark that was claimed to be clearly descriptive or a distinguishing guise. Since there is a requirement to show that a trademark is distinctive it is only possible to secure a registration based on use. In practice this will mean that considerable time and effort will be given to locating evidence on a regional basis and preparing affidavits. In addition, it is anticipated new regulations or revised practice directions will clarify the specific requirements for each of these signs.


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

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