There are many similarities in the application process of the Canadian and US trademarks. There are however some differences that exist between the two.
1. Extra filing fees for goods (products) or services in two or more classes
There are 45 distinct classifications of goods and services in the US. In the US, depending on the number of selected “classes” of products and services in the trademark application, the filing fees vary.
In Canada on the other hand, the filing fee does not depend on the number of goods or services. What this means is that regardless of the number of products or services, an applicant will only pay the same filing fee. Canada is changing this in June of 2019 (there will be fees per class as well).
2. Registration of trademarks
Trademark registration systems in the US and Canada are different. That a trademark is registrable in the US does not mean it may be registrable in the Canada, and vice versa.
3. Change of filing basis
Generally, an application can be filed on two bases; “use” basis or “intent to use”foundation. These two bases are applicable both in the US and in Canada.
In the US, a trademark application can be filed based on “intent to use” basis if the applicant has not sold any products in the US yet. This application can be later changed to “use” basis.
Except when a Declaration of Use is filed, this change is not allowed in Canada. It means that a proposed use application cannot be converted to a use application halfway through the process, except when an appeal was approved for registration.
4. Non-traditional marks
In the case of registering non-traditional trademarks, the United States has been more open. Sound trademarks have been recorded in the US for over 60 years, and other non-traditional marks like textures, holograms, scents, and motions have been registered.
Canada in recent times has started accepting applications for non-traditional types of trademarks.
5. Principal and Supplemental registers also descriptive trademarks
In the US, both Principal and Supplemental registers are present. Only limited protection is provided by the Supplemental Register when trademarks are not registrable on Principal Register. In Canada, a single trademark register (a place where trademarks can be registered) is used.
In the US, descriptive trademarks may be registered on the Supplemental Register. So some protection will be awarded to these descriptive trademarks. Over time if there is a lot of sales and advertising, it’s possible to re-file an identifying mark on Principal Register.
In Canada, descriptive trademarks are not registrable. In limited circumstances, descriptive trademarks that have “acquired distinctiveness” may be registrable (just like in the US).
6. Renewal procedure
In the United States, a trademark must be renewed every ten years. However, in Canada, the renewal period for every trademark registration is every 15 years.
7. Evidence of Use
As of the time of this writing, the division of a trademark is not possible in Canada. While significant changes are on the way, for now, you can’t divide.
For the US trademark, it is possible to divide applications that contain both “intent to use” basis and “use” basis to register the prior use claims on one application while the applicant can continue the intent to use claim in another form.
8. Use of the ® Symbol
It is not required that trademark users use the ® symbol in the United States and Canada. The ® symbol can only be used with a registered trademark in the US.
9. Divided applications
When trademark applications contain both “intent to use” basis and “use” basis in the US, they can be divided into an application to register the prior “use” claims while the “intent to use” claims continue in a separate application.
As at the time of the writing, the division of a trademark is not possible in Canada.
10. Opposition period
In Canada, the opposition period is two months. In the US, it is only 30 days after a trademark has been advertised for opposition purposes.
11. Time from filing to registration
Achieving registration in Canada takes an average of 18-24 months after filing. In the US, it takes half the time – 9 months from filing to registration.
12. Extensions of time
Asking for an extension of time in Canada is more comfortable than in the US.
In the US, there are strict regulations on the number of extensions you can get. Five extensions of time are available once a trademark is allowed, but one cannot get an extension of time to respond to an office action.
13. Official trademarks
There are distinctive marks used by governments, public authorities, Royalty, and universities. These are called “Official Marks.” Official Marks include Olympic rings, the Royal Arms, Red Cross and the national flags of most countries. All these are available in Canada only.
The United States does not have official marks.
14. Madrid Protocol
It is possible to file an International trademark through the Madrid protocol in the US. Canada is only becoming a member of the Madrid protocol in June of 2019, so for now, International trademarks are still not possible in Canada.
There are no doubts that some similarities exist between the US and Canadian trademark law. However, there are still some differences between the requirements of the two countries.
Good knowledge of the similarities and differences between the Canadian and American trademark laws can be of immense help to brand owners who have trademark portfolio in both countries.
We can support you get the best decision as to which trademarks need to be protected in what jurisdictions. We are available for a free trademark consultation, and we are here to help you with any trademark issues you may have.