Please refer to 5.4 Opposition Procedure for timelines.

Trade mark applications can be opposed for any of the following reasons:

• the application does not comply with the requirements regarding the contents of the application;
• the application was filed in bad faith;
• the trade mark is not registrable;
• the applicant is not the person entitled to registration;
• the trade mark is not distinctive;
• at the filing date of the application in Canada, the applicant was not using, or did not propose to use, the trade mark in Canada in association with the goods or services specified in the application; and
• at the filing date of the application in Canada, the applicant was not entitled to use the trade mark in Canada in association with those goods or services.

Canada does not specifically recognise “dilution”, but has a similar cause of action for “depreciation of goodwill”. This is not a ground of opposition, but it allows a registered trade mark owner to sue a third party who uses the registered trade mark in a manner that is likely to have the effect of depreciating the value of the goodwill in that trade mark.

Any person is entitled to start an opposition, provided that such person relies on at least one of the grounds of opposition. Any number of persons can be named jointly as opponents. Opponents do not need legal representation, but legal representation is advisable due to the complex nature of opposition proceedings. The office fees to initiate an opposition are approximately CAD790. The opponent does not need to hold a trade mark or a trade mark registration. 

The opposition procedure is as follows.

• Filing a statement of opposition – The opponent must file a statement of opposition within two months of the advertisement of the trade mark. If the deadline is missed, a retroactive extension to oppose may be requested but will not be granted unless the potential opponent can establish that its failure to oppose the application prior to the deadline was not reasonably avoidable. A fee must accompany the request.
• Filing a counterstatement – The applicant must file a counterstatement within two months after the date on which the copy of the statement of opposition was forwarded to the applicant. If the deadline is missed, a retroactive extension may be requested to prevent the application from being deemed abandoned. A fee must accompany the request and the other side must be copied.
• Filing evidence in support of opposition – The opponent has four months from the effective date of service of the applicant’s counterstatement to file evidence in support of its opposition.
• Cross-examination – The applicant may request cross-examination of the opponent’s affiants. If the request is made within two months after the evidence has been filed, the applicant’s deadline for filing its evidence will be extended.
• Filing evidence in support of application – The applicant has four months from the effective date of service of the opponent’s evidence or completion of cross-examination (if the cross-examination request was made within the two-month window described above) to file evidence in support of its application.
• Cross-examination – The opponent may request cross-examination of the applicant’s affiants. 
• Filing further evidence in reply to evidence in support of opposition – The opponent has one month from the effective date of service to the applicant’s evidence to submit and serve evidence in reply (if any).
• Opponent’s written representations – The time within which the opponent may submit and serve its written representations or statement that no representations will be submitted is two months from the date of the Registrar’s notice inviting parties to submit and serve written representations.
• Applicant’s written representations – Where the opponent has submitted and served written representations within the prescribed time, the applicant may submit and serve its written representations two months from the effective date of service of the opponent’s written representations. Where the opponent has not submitted and served written representations within the prescribed time, the applicant may submit and serve its written representations two months from the expiry of the opponent’s deadline to submit and serve its written representations.
• Hearing – Where the applicant has submitted and served its written representations on the opponent within the prescribed time, a party must give the Registrar written notice of its request for hearing one month from the effective date of service of the applicant’s written representations. Where the applicant has not submitted and served its written representations within the prescribed time, a party must give the Registrar written notice of its request for hearing one month from the expiry of the applicant’s deadline to submit and serve its written representations.

A party to the opposition may appeal the opposition decision by filing an appeal at the Federal Court within two months from the date on which notice of the decision was dispatched by the Registrar.

Refer to 6.4 Revocation/Cancellation Procedure for timelines.

Section 45 of the Act allows anyone to request that a trade mark registration be removed (expunged) from the Register of Trademarks if the owner is unable to show use of the trade mark in Canada during the three-year period preceding the date of the Section 45 notice, and there are no special circumstances justifying the lack of use.

Section 57 of the Act gives the Federal Court the exclusive jurisdiction to order that any entry in the Register of Trademarks be struck out on the grounds that the register does not accurately express the rights of the person appearing to be the registered owner of the trade mark. This section allows for broad inter partes expungement proceedings where issues such as ownership, distinctiveness or abandonment of a registered trade mark may be raised before the Federal Court. The following is a non-exhaustive list of grounds for expungement that may be raised in the Federal Court:

• the trade mark was not registrable as of the date of its registration;
• the trade mark is not distinctive on the date the expungement proceedings are commenced;
• the trade mark has been abandoned;
• the registered owner was not the person entitled to secure its registration proceedings were instituted; and
• the application for registration was filed in bad faith.

Under Section 45, any person can apply to have a trade mark registration that has been registered for a period of three years or more expunged.

Section 57 gives any “person interested” the right to apply to the Federal Court to order that a trade mark registration be struck. A “person interested” includes any person whose rights may be restricted or affected by a registration.

Section 45 Proceedings

Section 45 proceedings are solely used for the expungement of trade marks that are not in use in Canada. The requesting party files a written request asking the Registrar to forward a Section 45 notice to the registered owner of a trade mark. The fee for a Section 45 notice at present is CAD407.18. The requesting party may request that the Registrar limit the Section 45 notice to particular goods or services set out in the registration.

The owner of the trade mark registration is then provided with an opportunity to file and serve evidence in the form of affidavits or statutory declarations. The registered owner must furnish and serve evidence within three months from the date of the Section 45 notice. There is no right to cross-examine on the evidence filed in a Section 45 proceeding.

The evidence furnished in response to the Section 45 notice should demonstrate:

• use of the registered trade mark in Canada at any time during the three-year period immediately preceding the date of the Section 45 notice (the relevant period) with respect to each of the registration’s goods or services specified in the Section 45 notice; and, if not,
• the date when the registered trade mark was last used in Canada and the reason(s) for the absence of use since that date.

The affidavit or statutory declaration must contain sufficient facts to support a conclusion that the trade mark has been used in Canada by the registered owner or an assignee. In cases where the trade mark was not in use at any time during the relevant period, the affidavit or statutory declaration should indicate the date the trade mark was last in use and the reason(s) for the absence of use since that date. In order for the registration not to be expunged, the Registrar must be satisfied that there were “special circumstances” excusing the absence of use during the relevant period. “Special circumstances” means circumstances or reasons that are unusual, uncommon, or exceptional.

Once the owner of the trade mark registration serves and files evidence, the Registrar will give the parties notice that they may submit and serve written representations sequentially. Written representations are not required in Section 45 proceedings. If neither party submits and serves written representations within the respective deadlines, or requests a hearing, the Registrar will proceed to issue the final decision. The time within which the requesting party may submit and serve its written representations, or a statement that no representations will be submitted, is two months from the date of the Registrar’s notice inviting parties to submit and serve written representations. The registered owner may submit and serve its written representation two months from the effective date of service of the requesting party’s written representation or, where the requesting party has not submitted and served written representations within the prescribed time, two months from the expiry of the requesting party’s deadline to submit and serve its written representations.

Either party may make oral representations at a hearing if it files a request to be heard. A party’s request to be heard may be conditional on the other party also requesting to be heard. If neither party files a request to be heard, a decision will be issued based on the written representations. The time within which a party must give the Registrar written notice of its request to be heard is one month from the effective date of service of the registered owner’s written representations or, where the registered owner has not submitted and served written representations within the prescribed time, one month from the expiry of the registered owner’s final deadline to submit and serve its written representations.

Once the file is ready to be scheduled for a hearing, the Registrar will issue a notice to the parties setting out the time, date, location, manner and duration of the hearing. The Registrar will issue a notice advising parties of the scheduled hearing date at least 90 days prior to the hearing date.

Once all the stages are complete, the Registrar will render a final decision in writing to maintain, amend or expunge the registration. The decision will be sent to the registered owner and the requesting party in accordance with Section 45(4) of the Act. The decision of the Registrar to maintain, expunge or amend the registration may be appealed to the Federal Court.

Section 57 Proceedings

Proceedings under Section 57 may be made by the filing of an originating notice of motion, by counterclaim in an action for the infringement of the trade mark, or by statement of claim in an action claiming additional relief under the Act. The procedure that will follow in the Federal Court depends on the nature of the proceedings.

The Federal Court will only order a trade mark to be struck from the Registrar if at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the registered owner of the trade mark. The relevant date for assessing the accuracy of the rights appearing in the Registrar is the day the application challenging the right was made.

An officer of the Registry of the Federal Court shall file with the Registrar a certified copy of every judgment or order made by the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada relating to any trade mark on the register or to any protected geographical indication. It is nonetheless recommended to obtain a certified copy of the Federal Court judgment and forward it to the Registrar’s office with a letter requesting that the Registrar take notice of the judgment and effectuate the modification ordered in it.

A party can seek to cancel only part of a Canadian trade mark registration.

No information is available in this jurisdiction.

An invalidity attack on a registration is often heard concurrently with an infringement claim; however, one may seek to invalidate a trade mark registration without a corresponding infringement claim.

A party may seek to invalidate a registration on the basis of fraudulent misrepresentations.

The Trademarks Act does not include an express limitation period for civil actions. However pursuant to section 39 of the Federal Courts Act, the applicable limitation period for trade mark proceedings may be governed by a provincial law (usually two years) if the full scope of infringement occurs in that province alone. Alternatively, the limitation period may be governed by federal law (six years) if infringement arises otherwise than in a single province.

Causes of Action

Pursuant to Section 19 of the Act, the registration of a trade mark gives the owner of that registration the exclusive right throughout Canada to use that trade mark in respect of those goods and services in association with which it is registered. A cause of action for infringement arises when another party encroaches on this exclusive right by using an identical mark on the same goods or services.

Infringement is also deemed to occur pursuant to Section 20 of the Act by any person who is not entitled to use the trade mark and who:

• sells, distributes or advertises any goods or services in association with a confusing trade mark or trade name;
• manufactures, causes to be manufactured, possesses, imports, exports, or attempts to export, any goods in association with a confusing trade mark or trade name, for the purpose of their sale or distribution;
• sells, offers for sale or distributes any label or packaging, in any form, bearing a trade mark or trade name, if:
1. the person knows, or ought to know, that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade mark; and
2. the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trade mark or trade name; or
• manufactures, causes to be manufactured, possesses, imports, exports, or attempts to export, any label or packaging, in any form, bearing a trade mark or trade name, for the purpose of its sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it, if:
1. the person knows, or ought to know, that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade mark; and
2. the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trade mark or trade name.

Section 7(b) of the Act also allows a registered trade mark owner to bring an action for passing off. Passing off will be described below as it is also a cause of action available under the common law for unregistered trade marks.

Dilution

Although there is no specific “dilution” remedy in Canada, Section 22(1) of the Act provides a similar remedy. This section prohibits any person from using another person’s registered trade mark in a way that is likely to have the effect of depreciating the value of the goodwill attached to it (potentially including by dilution). The claimant must show that:

• the defendant used the claimant’s mark or potentially a mark that is “sufficiently similar” (albeit the case law on whether “sufficiently similar” is enough is not yet settled);
• the claimant’s mark is well known enough to have significant goodwill;
• the claimant’s mark (or sufficiently similar mark) was used by the defendant in a way that is likely to affect that goodwill; and
• the likely effect is to depreciate that goodwill.

Registered Versus Unregistered Trade Marks

The primary difference between causes of action for registered and unregistered trade marks is that a registered trade mark holder may avail themselves of any cause of action in the Act (Sections 19, 20, 22 and 7) against an infringer anywhere in Canada, while the holder of an unregistered mark is limited to a cause of action under common law for passing off and only in the geography where their goodwill extends - i.e. where the mark has become recognized

A pure common law passing-off claim, as a matter relating to property and civil rights, can only be brought in a provincial superior court. However, the same cause of action has been codified in Section 7 of the Act, placing it into the jurisdiction of the Federal Court as well.

In either case, an action for passing off enables a party to protect the goodwill in their mark. A successful claim for passing off requires three key elements:

• existence of goodwill in the mark;
• deception of the ‎public due to a misrepresentation; and
• actual or potential damage caused by this deception.

Goodwill

To show goodwill under the first element, the claimant must establish that its mark has become known in the ‎market and has acquired a reputation.‎ Goodwill may have been created through ‎the exclusive association of the name, mark or other indicia relied upon with its business, wares or ‎services.‎ While “fame” is not a requirement, a court will want to take that factor into ‎consideration, as well as more general factors, such as the degree of recognition of the mark, the ‎volume of sales, the depth of market penetration of products associated with the mark, the extent and ‎duration of advertising of the mark, the geographic reach of the mark, the mark’s inherent or acquired ‎distinctiveness, whether products associated with the claimant’s mark are confined to a narrow or ‎specialised channel of trade or move in multiple channels, and the extent to which the mark is identified ‎with a particular quality.‎

Misrepresentation

Misrepresentation occurs when there is use of a mark or name, likely to result in ‎consumer confusion or mistake, whereby the average consumer confuses the goods ‎and/or services of the owner with those of the alleged infringer, or the average ‎consumer improperly concludes there is an affiliation with the owner’s goods and/or ‎services and those of the alleged infringer.‎ ‎

Damage

There must be actual, or a real likelihood of, damage. Damages may be shown as lost profits, loss of market share, or loss of control of ‎a trade mark or trade name.‎

Cybersquatting

CIRA has also developed a domain name dispute resolution policy (CDRP) that applies to resolve disputes and infringements concerning Canadian domain names (those ending in .ca). The CDRP applies where a Canadian domain name is confusingly similar to a mark to which the complainant had rights, where the registrant had no legitimate interest in the domain name, and where the registrant registered the domain name in bad faith.

Generally, the parties to an action for infringement are a trade mark owner, whether registered or not, and an infringer. Beyond this, pursuant to Section 50(3) of the Act, and subject to any agreement subsisting between an owner of a trade mark and a licensee of the trade mark, the licensee may call on the owner to take proceedings for infringement. If the owner refuses or neglects to do so within two months of being so called on, the licensee may institute proceedings for infringement in the licensee’s name as if the licensee were the owner, making the owner a defendant.

Prior to registration, the owner of a mark may protect its rights by bringing an action for passing off under common law, as discussed above.

Class proceedings are generally permitted in Canada where appropriate.

The Federal Court of Appeal has considered class actions in the intellectual property space, albeit in the context of copyright law, and stated that the objectives of such actions are:

• facilitating access to justice through the distribution of legal fees across a large number of class members;
• conserving judicial resources by reducing unnecessary duplication in the fact-finding and legal-analysis process; and
• modifying harmful behaviours by ensuring that actual and potential wrongdoers take into full account the harm they are causing or might cause.

In determining whether it is appropriate to certify a class action, the Court confirmed that “the primary question to be answered is whether the class proceeding would be a fair, efficient, and manageable method of advancing the claim.” The Court also noted that the novelty of a class action is not a reason to deny certification, thus keeping the cause action available for trade marks.

There are no prerequisites to filing a lawsuit and currently no restrictions on a trade mark owner asserting its rights against others. Although not yet in force, an amendment to the Act stipulates that a trade mark owner that makes an application claiming that an act has been performed contrary to Section 19, 20 or 22 will only be entitled to relief if it had used the trade mark in Canada within three years following registration or special circumstances exist excusing non-use.

The same remedies are available to registered and unregistered trade mark owners. The Act provides that a court may make any order it considers appropriate, including damages, profits, punitive damages, injunctive relief, destruction or delivery up of infringing material.

An alleged infringer may counterclaim or bring an action seeking to invalidate any asserted trade mark registration. A defence to any action based on a trade mark registration is to show that the registration is invalid (per Section 18(1) of the Act).

There are no special provisions for lawsuits in trade mark proceedings. Claims must disclose a reasonable cause of action and be sufficiently particularised. It is possible to provide particulars or request an amendment to a pleading if the pleading is deficient such that the defendant cannot respond.

A defendant in a trade mark action can initiate a counterclaim; for example, to allege that the trade mark is invalid and should be expunged.

Trade mark enforcement proceedings can be commenced at the Federal Court or the relevant provincial superior court. The most common way to commence an infringement proceeding is through an action, but an application may also be used. Warning, or cease and desist, letters may be employed, but are not necessary.

The Federal Court has jurisdiction to hear and determine proceedings under any section of the Act, including claims of passing off under Section 7. Claims of passing off under common law may only be brought before provincial courts. Most IP infringement cases in Canada are tried in Federal Court and the Federal Court has exclusive jurisdiction to strike out a registered trade mark, which is a common counterclaim brought in trade mark proceedings.

If the proceeding involves a smaller sum of money, parties may proceed by way of a simplified action. Claims for less than or equal to CAD100,000 may be brought as a simplified action.

An appeal of a decision of the Federal Court is to the Federal Court of Appeal as of right. An appeal from the Federal Court of Appeal is to the Supreme Court of Canada, with leave. An appeal from a provincial court may be taken to a provincial court of appeal or a district court, and further appeals are also to the Supreme Court with leave.

Parties do not need to be represented by a lawyer. However, in Federal Court, a corporation, partnership or unincorporated association must be represented by a solicitor unless the Court grants leave, in special circumstances, for it to be represented by an officer, partner or member. Similarly, a corporation must be represented by a lawyer in the Ontario Superior Court except with leave of the court.

Office actions and decisions of the trade marks office may also be considered as “other surrounding circumstances” in a confusion analysis, but are not determinative in a court proceeding.

Pursuant to Section 53.2(1) of the Act, an “interested person” may request relief, including a declaration of non-infringement. The “interested person” must demonstrate a reasonable apprehension that its interest has been, or may be, affected, to request such relief.

Trade mark owners in Canada bear the responsibility for actively policing the market and initiating steps to address counterfeit activities. Trade mark owners can seek declaratory relief, an injunction and damages, which may be an accounting of profits derived from the trade mark infringement. The court may also award punitive damages. Trade mark owners may request the assistance of the Minister of Public Safety and Emergency Preparedness in pursuing remedies with respect to goods imported or exported in contravention of Section 51.03 of the Act. The request is valid for two years, beginning on the day on which it is accepted by the Minister.

Trade mark owners may also request assistance from the Canada Border Services Agency, which may temporarily detain suspected counterfeit and pirated goods that are found at the border.

The Act strictly disallows the importation or exportation of goods that bear the mark of an owner of such registered trade mark (Section 51.03(1)).

The Combating Counterfeit Products Act includes an offence provision in the Trademarks Act, which states: “51.01(1) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale any goods in association with a trademark if that sale or distribution is or would be contrary to section 19 or 20 and that person knows that; (a) The trademark is identical to or cannot be distinguished in its essential aspects from a trademark registered for such goods; and (b) The owner of that registered trademark has not consented to the sale, offering for sale or distribution of the goods in association with the trademark.”

There are no special provisions for trade mark proceedings. Civil cases are determined by a judge alone and there is no true forum shopping; the parties cannot influence who the decision-maker will be.

Infringement under Sections 19 and 20 of the Act requires proof that the defendant had used the trade mark as a trade mark; that is, as an indicator of source of the associated product or service.

Depreciation of goodwill under Section 22 requires deemed use of the trade mark as set out in Section 4 of the Act but does not require the trade mark to have been used as an indicator of source (eg, certain comparative advertising may be caught under, and be in contravention of, Section 22).

For infringement to occur, the infringing use must have been use as a trade mark in the normal course of business. Section 19 of the Act prohibits the use of a mark that is identical to a registered trade mark on identical goods or services. Section 20 is broader and prohibits the use of confusingly similar marks by deeming confusing use to be an infringement. The following factors, established in Section 6(5) of the Act, are assessed for the purposes of confusion:

• the inherent distinctiveness of the trade marks or trade names and the extent to which they have become known;
• the length of time the trade marks or trade names have been in use;
• the nature of the goods, services or business;
• the nature of the trade; and
• the degree of resemblance between the trade marks or trade names, including in appearance or sound, or in the ideas suggested by them.

On top of the above factors, the Act also states that “all surrounding circumstances” should be considered in a confusion analysis. Such circumstances may include the fame of the mark.

As noted in 7.2 Legal Grounds for Filing Infringement Lawsuits, there is no dilution remedy in Canada but acts that cause a depreciation of the goodwill attaching to a trade mark, which may include acts of dilution, are caught under Section 22 of the Act.

Also as noted in 7.2 Legal Grounds for Filing Infringement Lawsuits, cybersquatting is an issue that may be dealt with before CIRA under its CDRP procedure.

Please refer to the Registered Versus Unregistered Trade Marks section of 7.2 Legal Grounds for Filing Infringement Lawsuits.

Registered trade marks enjoy stronger and clearer legal protection. Such marks are presumed valid unless proven otherwise by the defendant, whereas there is no common law presumption of rights in unregistered marks.

A registered trade mark owner bringing an infringement action does not need to show the geographic scope of its accrued goodwill, while an unregistered mark holder must do so in a passing-off claim. A claim of infringement of a registered trade mark may be brought irrespective of where in Canada the mark was used. Claims of passing off of unregistered marks are limited to the geography where goodwill in those marks exists.

Furthermore, the validity of registered trade marks may be incontestable in certain circumstances: pursuant to Section 17(2) of the Act, in proceedings commenced after the expiry of five years from the date of registration of a trade mark, no registration may be held invalid on the ground of previous use or making known, unless it is established that the registered trade mark owner adopted the mark with knowledge of that previous use or making known.

The following defences may be raised:

• non-use of the mark by the defendant as a trade mark in the normal course of a trade;
• invalidity of the asserted trade mark, including due to non-registrability at the date of registration, lack of distinctiveness of the mark when proceedings began, abandonment of the mark, lack of entitlement to the mark, or based on the mark being filed in bad faith;
• right to use as a personal name;
• limitation period;

• equitable defences, including laches, estoppel, and acquiescence to use; and
• valid registration is a presumptive defence to infringement.

A party bringing a claim has the right to obtain full discovery of a defendant or defendants in the normal course of litigation.

An Anton Piller Order may also be obtained, which is akin to a civil search warrant, allowing a plaintiff to collect evidence from a defendant.

A Norwich Order may also be obtained to compel information from a third party prior to starting a claim.

Expert evidence, including surveys, provided by a qualified expert is admissible if it is relevant and necessary to assist the trier of fact.

Based on the guidance in Masterpeice Inc v Alavida Lifestyles Inc, 2011 SCC 27, a court will view expert evidence as unnecessary when the casual consumer of the goods or services at issue is not expected to be particularly skilled or knowledgeable and the evidence simply assess the resemblance of the marks. Surveys can meet the necessity requirement as they can provide empirical evidence of confusion, genericness, or secondary meaning that would not be inherently known to a judge. Surveys will, however, be excluded as irrelevant if they are improperly structured; eg, the questions are incorrectly formulated, or the wrong population is surveyed.

Sections 406 to 414 of Canada’s Criminal Code create offences and establish penalties dealing with forgery and passing off of trade marks. Anyone who is guilty of committing an offence is liable to imprisonment for a term not exceeding two years. For guilt to be found, the Crown must prove the wilful intent to deceive or defraud beyond a reasonable doubt. Due to this high burden, there have been very few criminal cases.

The Act includes Section 51.01, which creates offences and establishes a punishment for knowing contraventions of Section 19 or 20 of the Act. The required knowledge is also difficult to prove, and this section is generally unused.

Furthermore, Sections 51.02 to 51.12 establish a regime that may be used to allow customs officers to detain counterfeit goods meant for import or export.

The legal costs for bringing an infringement lawsuit to conclusion can be significant and vary depending on the issues in play. Lawyers in Canada usually charge hourly rates.

The Federal Court operates on a tariff system for costs. An unsuccessful party must pay the successful party an amount calculated based on steps taken in the proceeding. The tariff system is out of date, resulting in calculated costs being significantly below actual costs. Therefore, the Federal Court has recently begun issuing lump-sum costs awards to successful litigants that represent around 30% of actual costs.

In contrast to costs, reasonable disbursements of the successful party must be paid in full by the unsuccessful party.

Interim injunction relief may be requested and, if granted, may enjoin a party until an interlocutory injunction request can be heard. An interlocutory injunction may enjoin a party until a full hearing on the merits can occur. To be granted either of these injunctions, a party must show:

• there is a serious issue to be tried;
• that it will be irreparably harmed if the activity continues; and
• that the balance of convenience is in its favour.

Irreparable harm is difficult to show in practice and many requests for such injunctions are unsuccessful. A request for either of these injunctions will also fail if the request is not made expeditiously.

A final injunction is granted in the normal course and is standard relief sought by a plaintiff.

A trade mark owner may obtain a monetary award in the form of a recovery of damages suffered or as an accounting of profits improperly made by the infringer. Punitive damages may also be available, as well as interest.

The destruction or other disposition of any offending goods, packaging, labels and advertising material and any equipment used to produce the goods, packaging label or advertising material is permitted as a remedy.

See 8.10 Costs of Litigating Infringement Actions.

A trade mark owner can seek relief without notice to the defendant.

A prevailing defendant is entitled to a portion of its legal costs and a full reimbursement of reasonably incurred disbursements, such as reasonable expert fees. If requested in a counterclaim, a defendant may also obtain a declaration of non-infringement or expungement of the asserted mark, if found invalid.

See 8.9 Trade Mark Infringement as an Administrative or Criminal Offence.

There are no different remedies for different trade marks.

Parties are encouraged to seek the court’s assistance at any time to pursue ADR. The court will also generally raise these mediation options throughout the proceeding, including at those junctures where it would lead to the most efficient and cost-effective disposition of the action, such as the close of pleadings, or immediately following documentary production or oral discoveries, and even at the pre-trial conference.

ADR is a common way of settling trade mark issues.

After filing a statement of claim and a statement of defence, the Federal Court strongly recommends that the parties discuss the possibility of mediation during the requisite settlement discussion period pursuant to Federal Courts Rule 257. The parties should also discuss the opportunity of having the case specially managed pursuant to Rule 383. Case management is a system designed to reduce unnecessary delay and cost, facilitate early and fair settlements, and bring cases promptly to a just conclusion. The Case Management Judge or Associate Judge will help the parties determine the opportune time to have a meaningful mediation.

Mediation is an informal process, guided by the mediator. Parties have a chance to present their case and ask questions. The mediator will help explore settlement options and may meet separately with each party during the session.

ADR is also available through commercial services.

Parallel litigation is generally avoided, and proceedings may be consolidated in the court that has jurisdiction over all issues. For example, an infringement claim based on a registered mark and initiated in a provincial court may be moved to a Federal Court if a claim is made that the asserted mark is invalid. Only the Federal Court has jurisdiction to invalidate the registered mark.

However, parallel infringement cases in another country is not a basis to stay trade mark litigation in Canada.

In the case of an interlocutory judgment of a Federal Court, such as regarding an injunction, a notice of appeal to the Federal Court of Appeal must be brought in ten days. In any other case, 30 days are provided.

There are no special provisions.

An appellate standard of review applies: for questions of law, the standard of review is correctness, and for questions of fact or mixed fact and law, the standard is one of reasonableness.

Original design features of a trade mark, including a logo, may also be protected by copyright and moral rights. Using an identical or confusingly similar logo as a trade mark creates trade mark infringement risk; copying the logo without permission may also create copyright risk.

Section 12(2) of the Act states that a trade mark is not registrable if, in relation to the applicable goods and services in association with which it is used or will be used, its features are dictated primarily by a utilitarian function (that is, if those features are essential to the use or purpose of the applicable goods or services). This provision is meant to ensure that patent rights (which are time-limited) are not extended indefinitely through trade mark protection, and to ensure that one trader does not have a monopoly on functional features.

A trade mark that is a surname does not engage moral rights (which are held by creators of original works), though it may engage publicity and personality rights (see 12.3 Rights of Publicity and Personality). However, the Act holds that a trade mark is not registrable if it is a word that is primarily merely the name or surname of an individual who is living or who has died within the preceding 30 years. The Act also prohibits anyone from adopting in connection with a business, as a trade mark or otherwise, any matter that may falsely suggest a connection with any living individual (Section 9(1)(k)), and any such trade mark is not registrable (Section 12(1)(e)) by anyone other than the living individual.

Industrial design rights (which must be registered to be enforceable in Canada) protect a product’s unique appearance – features of shape, configuration, pattern and ornament applied to a finished article.

Trade marks are identifiers of source, which distinguish the owner’s goods and services from those of others. Designs, colours, three-dimensional shapes and modes of packaging goods, all of which might be protectable as industrial designs, can also be protected as trade marks. However, those trade marks might raise additional issues under the Act. For example, applicants may have to provide evidence that their trade mark is distinctive as of the filing date if the trade mark is 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, or is a mode of packaging goods. And, as noted in 12.1 Copyright and Related Rights, a trade mark is not registrable if, in relation to the applicable goods and services in association with which it is used or will be used, its features are dictated primarily by a utilitarian function.

Canadian law recognises that celebrities have “personality” and “publicity” rights in their names and likeness that give them the exclusive right to exploit their personality, name and likeness for commercial purposes. These rights arise under the common law in the common law provinces and under the Civil Code in Quebec. There is also some other statutory protection; for example, British Columbia’s Privacy Act states that it is a tort, actionable without proof of damage, to use another person’s name or likeness to advertise or promote property or services without that person’s consent. There are also privacy-related torts, including for “intrusion upon seclusion”, that may allow individuals to enforce rights in their likeness.

Celebrities may also register their names as trade marks in Canada, although it is not necessarily a simple undertaking. Section 12(1)(a) of the Act states that a trade mark is not registrable if it is “primarily merely the name or surname of an individual who is living or who has died within the preceding 30 years”. However, such a trade mark may still be registrable under Section 12(1)(3) if the applicant can prove that the trade mark is distinctive as of the application’s filing date, having regard to all the circumstances of the case, including the length of time for which the trade mark has been used.

Section 12(1)(e)’s prohibition against registering a trade mark that falsely suggests a connection with any living individual does not prevent a celebrity from registering their own name as a trade mark; because there is no “false connection” in that situation, the applicant will almost certainly have to provide evidence of distinctiveness, as described above.

Canada recognises the common law tort of “passing off”, which can be used to enforce registered and unregistered trade mark rights to protect against unfair competition. At a high level, the tort’s three main elements are:

• the existence of goodwill;
• deception of the public due to a misrepresentation; and
• actual or potential harm to the plaintiff.

This common law tort is also codified in Section 7(b) of the Act.

Bad-Faith Filings

A trade mark application can be opposed, and a registration can be invalidated, on the basis that the applicant filed the application in bad faith. Issues of bad faith have become more relevant now that use in Canada is no longer a requirement for registration (which means an increased possibility of trade mark squatting). A recent decision shed some additional light on the bad-faith analysis by holding that being wilfully blind as to whether the applicant had the right to register the trade mark, and failing to make obvious enquiries on that issue even with knowledge of another business using the brand, was not bad faith.

Distinctiveness/Descriptiveness

As noted in 4.9 Refusal of Registration, the 2019 amendments to the Act added distinctiveness (or lack of it) as a basis of examination and refusal. Since then, distinctiveness objections have sky-rocketed, even for traditional marks (CIPO takes the position that non-traditional marks such as sounds, colours and three-dimensional marks are presumed to be non-distinctive, such that applicants must provide evidence of distinctiveness). These objections can be challenging to overcome. The question of whether a mark has no distinctiveness (not registrable) or low inherent distinctiveness (registrable) is often not easy to decide (or to convince an examiner about), and there will likely continue to be uncertainty around these issues and how to address them.

Prosecution Delays

CIPO’s published performance targets state that 90% of applications should be examined within 22 months after filing. In reality, due to the COVID-19 pandemic and other issues, Canadian trade mark prosecutions continue to be significantly delayed. Applications that do not use pre-approved wording for goods and services are currently being examined about three years after filing, applications using pre-approved wording are being examined about two years after filing, and Madrid applications are being examined about 1.5 years after the WIPO notification of designation. Although prosecution times are slowly improving, the situation means:

• there is a benefit to using pre-approved wording from the Goods and Services Manual, if appropriate wording is available (see 4.1 Application Requirements); and
• the lengthy delay before examination is more reason to conduct pre-clearance searches, as an applicant will not be informed of potentially conflicting marks through an office action until well after the application is filed (and, perhaps, well after the applicant has started using the mark in Canada).

Where trade marks are being infringed online, a cease and desist letter can be sent to the website host, and the owner of the website content if discoverable. Sending a letter to the website host puts it on notice of the fact that it is hosting a website that contains material that constitutes trade mark infringement. Such letter to the website host can result in a swift taking down of the website because if, once on notice of infringement, a website host fails to remove the website containing infringing material, the host may be deemed to be facilitating and assisting infringement and, as such, be jointly liable for the infringement. Website hosts will often take down a website after receiving what looks like a well-founded complaint, rather than assessing the complaint’s merits and thereby taking the risk of being held jointly liable if they fail to take down the website.

The remedies for online trade mark infringement are the same as any other infringing trade mark actions, which have been outlined above.

There are few specific Canadian business rules or norms regarding trade marks.

One issue of note relates to Quebec’s French-language laws. Quebec’s Charter of the French Language makes French Quebec’s official language, and requires that most commercial labels, signs, posters, manuals, etc be provided in French (or predominantly in French, if presented in French and another language). One exception is that a “recognised trademark” (including a registered trade mark) may be in a language other than French, unless a French version of the mark has been registered. Proposed amendments introduced in 2021 broaden the French-language requirements by requiring that a trade mark may only appear, even partially, in a language other than French “on public signs and posters and in commercial advertising” if it is registered (not just “recognised”, meaning that unregistered trade marks, including trade marks for which applications are pending, are not sufficient) and there is no corresponding French-language registration. With or without these amendments, if a business’s primary trade marks are in a language other than French, there is therefore some benefit in registering those trade marks to take advantage of the exceptions to Quebec’s language laws.