Canadian trademark registration based on registration abroad

Dave MacDonell

Dave MacDonell

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Trademark Registrations Can be Based on Foreign Trademarks

So you’ve read the Trade-mark’s Act Canada, and you’re concerned that your trade-mark is ineligible for Canadian trademark registration. A good trademark lawyer will advise on you on your options.  This could mean re-branding entirely, or it could mean that you simply need to file a registrability claim along with your original application to register a trademark.

In previous posts, we looked at the concept of registrability in detail, but did not discuss ways to register an otherwise unregisterable trademark in Canada. One way to argue that an otherwise unregistrable trademark should be granted trademark registration is to claim that the trademark has become distinctive over time. This means that the trademark has achieved a level of status in the marketplace as of the date of filing the application to register a trademark with the CIPO. Your trademark lawyer can advise you as to whether your trademark meets the test for distinctiveness under the Trademarks Act, as well as your likelihood of success.

Another way to approach Canadian trademark registration for an otherwise unregistrable trademark is to claim that the trademark is previously registered in another country, i.e., the applicant’s country of origin. However, there are some requirements that must be met in order to make a claim based on prior filing in another jurisdiction. For example, the Canadian trademark must be the same or substantially the same as the trademark registered in the foreign jurisdiction.

Here’s a list of the other requirements that must be met under the Trade-mark’s Act:

  • The Canadian trademark cannot be confusing with an existing registered trademark (Canada only);
  • The Canadian trademark cannot be without distinctive character, having regard to all the circumstances of the case including the length of the time during which it has been using any country;
  • The Canadian trademark cannot be contrary to morality or public order or of such a nature as to deceive the public; and
  • The Canadian trademark cannot be a trademark prohibited under Sections 9 and 10 of the Trade-marks Act.

Before filing your trademark application it is always advisable to consult with an experienced Canadian trademark lawyer who can assess the distinctiveness of your trademark and provide an opinion on the registrability of the mark.

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