What is use in Canada?

Goods – “Use” in association with goods generally means that the trade-mark appears on the goods themselves (e.g., on labels) or on the packaging of the goods or is associated in some other manner with the goods at the time of transfer of possession of or property in the goods (e.g. on point of sale materials).

The distribution of free samples of the goods or the mere advertising of goods (e.g. in brochures, catalogues or on a website) without actually selling the goods in Canada is generally not considered use of the trade-mark in association with the goods.

If the trade-mark appears on the goods or their packaging when manufactured in Canada and those goods are exported from Canada, that is also considered use in Canada.

Services – “Use” in association with services generally means that the trade-mark is displayed during the performance of the services in a manner such that notice of the association of the trade-mark and the services is given to the user of the services.  Advertising of services constitutes use so long as the services are performed or available to be performed in Canada at the time of such advertisement.

The registration of a business or corporate name in Canada containing the trade-mark or the conduct of business in Canada under a business or corporate name containing the trade-mark does not necessarily, in and of itself, constitute “use” of the trade-mark in association with services.

What is proposed use in Canada?

This basis is claimed if the mark has not yet been used in Canada in association with the claimed goods or services.  Prior to final registration, a Declaration of Use stating that the Applicant (or its licensee) has started using the mark in Canada must be filed with the Registrar of Trade-marks.  It is possible to file an Application that claims use in association with some goods/services and proposed use in association with other goods/services.

What is an application or registration and use in a foreign country?

If the Applicant has registered or applied to register the trade-mark in a country where it has a real and effective commercial or industrial establishment (i.e. a country of origin of the Applicant) and has used the trade-mark in that or any other country outside of Canada, then this is a separate basis for registration in Canada which should be claimed.  Confirmation of use in the foreign country is required, but first use dates in the foreign country are not required.  A certified copy of the foreign registration, together with a translation into English or French must be provided before the Canadian application will be advertised for opposition purposes.

What is making known in Canada?

This basis is rarely claimed, particularly where the Application also claims Use/Proposed Use and/or Application/Registration and Use in a Foreign Country. If this basis is claimed, the Applicant must state (and may be required to prove) that it has made the trade-mark known in Canada and must specify the date of first making known and the manner in which such mark has been made known in Canada in association with the claimed goods/services.  The Applicant must also identify a Paris Convention or WTO country where use of the mark has occurred in respect of the goods/services.  The manner in which a mark has been made known in Canada must be by the distribution of the goods in association with the mark in Canada or by advertisement of the goods and/or services in association with the mark in any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the goods or services, or by advertisement on any radio or television broadcasts ordinarily received in Canada by potential dealers in or users of the goods or services.

What is a priority claim?

If the Applicant has applied to register the trade-mark in a country of origin of the Applicant (i.e. any Paris Convention or WTO member country where the Applicant has a real and effective commercial or industrial establishment), priority may be claimed at any time within six months of the date of such application. The earliest filed application must be for the same or substantially the same trade-mark for use in association with the same kind of good and services.  A certified copy of the home country application does not need to be filed.  Note that a priority claim is not a basis of registration and there are no additional fees for including a priority claim in a Canadian trade-mark application.

What is the translation or transliteration requirements?

If the trade-mark consists of a word in a language other than English or French, please provide a translation, if applicable, into English or French.  If the trade-mark consists of foreign language characters (e.g. Chinese script or Arabic characters), please provide those characters in a .TIF format and both a translation and transliteration of those characters into English or French.

Are there other formalities?

It is not essential that an Application be executed by the Applicant and no Power of Attorney or Apostille under the Hague Convention is required in conjunction with a Canadian trade-mark application.