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Trademark Applications

1. Bases for Application
A Canadian application may be based upon one or more of the following bases:

  1. Use in Canada (may include use by a named predecessor-in- title).
  2. Registration (or application to register) and use in applicant's country of origin.
  3. Proposed use in Canada by the applicant (not available for specified wares or services if the mark has been used in Canada for such wares or services. However, both prior use and intended use may be presented in the same application for different wares and services).
  4. Proposed use in Canada by a licensee. The licensee need not be named.
  5. Theoretically, making known of a trademark in Canada is a basis for an application, but fact  situations rarely establish a sound foundation for alleging making known.

2. Items Needed to Obtain a Filing Date

  1. Identification of the trademark.
  2. List of wares and/or services (a single application may include both wares and services of different classes - there is no formal classification system in Canada).
NOTE: A very specific list must be presented, using ordinary commercial terminology. If the applicant is uncertain as of the filing date whether the list is complete, the list can include wording such as "and other related goods", which will permit the applicant to amend later to expand the list.
  1. Date of first use of the trademark in Canada (if the trademark has been used in Canada), for each general category of wares and services. The Trade-marks Office will accept a date identified as "since at least as early as" a stated year, or month and year. Note that no use need be stated; the application may be based on intended use of the mark.
  1. Name and address of applicant and name(s) of any predecessor(s)-in-title who previously used the mark. Preferably state the jurisdiction of incorporation of a corporate applicant and any special status (e.g., trade union) of an unincorporated entity.
  1. Particulars sufficient to identify any foreign counterpart registration or application relied upon (optional).

To obtain a filing date, there is no need for the applicant to execute any formal application papers. We can prepare the necessary application and execute it as agents.

3. Completion/Formal Drawings/Specimens

There is no statutory time limit for completion, but a completion fee is payable if the application is originally filed incomplete. If the mark is a design mark, formal drawings (2-3/4" x 2-3/4" in quadruplicate) must be filed to complete the application. We can arrange to have formal drawings prepared locally on the basis of specimens or prints. If available, please provide specimens manifesting use of the mark in Canada. No specimens or formal drawings are required for word marks (composed of upper case block letters). If the application is based upon registration or application and use in applicant's country of origin, a certified copy of the foreign registration must be filed (together with English translation, unless the document is already in French or English) before the application will be advertised.

4. Convention Priority
IMPORTANT: Convention priority must be claimed at the time of application. Please provide us with the country, application serial number, and filing date of the first-filed application. If some of the foregoing information is missing at the time of filing, normally it can be entered later by amendment, as long as the claim for priority has been presented in the application as filed. There is no need to file a certified copy of the foreign application.

5. Licensees/Registered Users

Licensees or other users of the trademark need no longer be recorded as registered users of the mark. Canada has abolished its registered user system. However, various provisions of the Trade-marks Act apply to licensees; please consult us if further information is required.

Nothing here written constitutes legal advice. The accuracy of what is written is not guaranteed.   
Please consult us about any specific matter on which you require legal advice.    © Barrigar Intellectual Property Law 2001