Canadian Intellectual Property Office. Trade-marks Office : Trade-mark legislation in Canada was first passed with the Act of the Province of Canada in 1860 (23 Vic., c. 27). It became a misdemeanour to unlawfully use a known trade mark, name or device to deceive. The Trade Mark and Design Act of 1868 (31 Vic., c. 55) was passed by the new Canadian parliament, giving authority to the Minister of Agriculture to keep a register of trade-marks. Provisions were made for cancellation, assignments and conflicts between claims. Several amendments and Acts were passed over the next century but the concept behind the registering of trade-marks in order to protect intellectual property remained a constant. The Unfair Competition Act of 1932 provided stricter regulations, ensured that a mark was distinctive, and codified penalties for the infringement on registered trade-marks. Moreover, the Act divided trade-marks into those consisting of words and those consisting of designs. However, some unexpected judicial decisions based on the 1932 Act required that the Secretary of State follow the British precedent and set up a committee to study Canada's trade-mark system. Its recommendations were eventually incorporated into the Trade Marks Act of 1953 (1 & 2 Eliz. II, c. 49). This new Act decreed that not only goods but services could be trade-marked, allowed an application for a trade-mark on proposed use, and published all new trade-marks in the Trade-marks Journal. The Trade-marks Act of 1985 (T-13) continued to refine the nature of trade-marks, how conflict over rights could be resolved, and a host of other questions and revisions to the nature of trade-marking in Canada. In May 1993, improvement of administrative practices and procedures were made to the Trade-marks Act, the Industrial Design Act and the Integrated Circuit Topography Act, under the Intellectual Property Law Improvement Act (S-17).
The trade-marking function of the Canadian Intellectual Property Office provides for the registration of trade-marks to encourage fairness in the marketplace, support Canadian competitiveness and ensure legal title to intellectual property. Trade-mark registration gives owners the exclusive rights in Canada to words (names), symbols, designs or combinations of these that distinguish their products and services from others. The Trade-marks Office is the office of primary interest and responsible for the trade-marking function in Canada.
There are three basic categories of trade marks: ordinary marks, certification marks, and distinguishing guise. Ordinary marks are words or symbols that distinguish the services or products of a specific company or individual. For example, registered marks or logos such as the titles Coca Cola or Nike, would be classified as such. Certification marks identify wares or services which meet a defined standard. These are not as common, but a service that is distinguishable from another, for instance, a method of quick repair or a fast pizza delivery, might qualify. The third basic category of trade marks are distinguishing guise. This is the identification of a product through its unique packaging, such as a square chocolate bar container or specially shaped bottle. These marks can only be registered when they become distinctive through use. Nor does this mean that other soft drinks can no longer be served in bottles. A distinguishing guise trade-mark simply protects the unique nature of that one bottle because it is closely associated with the product. Trade names can also sometimes be registered under the Trade-marks Act if they are used like a trade-mark. However, a trade-name cannot be registered unless they are used and incorporated into the trade-mark. Logos also may be trade-marked but as they are most often original creations they would also be protected by copyright. The same applies, but less often, between some industrial designs and distinguishing guise trade-marks. No mater how they are classified, all trade-marks must meet the definition and qualification of a trade-mark and be distinctive.
The main functions of the Trade-marks Office are: to receive and examine applications for trade-mark registration and grant registration to qualifying applicants; record and index registrations of trade-marks; receive and examine applications for registered users of trade-marks; grant registrations to qualifying registered users; maintain records of trade-mark registrations and pending marks and a search room of these records for public use; provide general information to the public about the trade-mark registration process; publish the Trade-marks Journal.
The process of registering a trade-mark is relatively simple. The applicant must file a separate application per trade mark for registration with the TMO. The application is then examined to ensure it meets the requirements of the Trade-marks Act (in most instances, the trade-mark must be used in Canada before it can be registered) and does not come into conflict with other registered trade marks. After fees are paid and it passes the initial examination, the trade-mark application is published in the Trade-marks Journal. Two months are allowed for challenges against the application. If any are filed, the Registrar, through the Trade-marks Opposition Board (see below), examines the evidence and either rejects or accepts the trade-mark application. Finally, with no other challenges, the trade-mark is registered.
Upon successful registration, Trade-mark protection is awarded for a 15 year period and can be renewed for further 15 years at a time. It is, however, only good for protection in Canada, and foreign registrations must be filed in respective countries if one seeks protection of a trade-mark outside of Canada. The same is true in other countries and therefore many of the trade-marks held at the Trade-marks Office (TMO) are not exclusively Canadian. It is estimated that unlike the 5% 'Canadian-content' of patents, at least 50% of the trade-marks registered at the TMO are Canadian. RDA 2000/017 Department of Industry Canadian Intellectual Property Office - Trade-marks Office and Copyright and Industrial Design Branch (Appraisal report)
