A Guide to Canadian Trademark Applications

Businesses filing in Canada may assume its trademark rules match US practice. An important distinction is that Canada does not require proof of use at the application stage in the same way as the US system. 

Canadian trademark practice often raises questions about marks combining non-distinctive words with logos. The Canadian Intellectual Property Office assesses the distinctiveness of the mark as a whole.

This article explains the main features of Canadian trademark practice and the assessment of distinctiveness, with practical considerations for filing strategy.

In the case of the character trademark, it is possible to apply with the character notation of the trademark. On the other hand, for a design trademark or a shape trademark, an image file must be submitted to confirm the shape of the trademark, which is typically used in JPEG format. Since the submitted trademark image is then the basis for judging the scope of the review and rights, it is important to prepare an image that fully reflects the actual form of use.

If you are applying for a design trademark, you must clearly specify whether to apply for that trademark in color or in black and white. This is not just a formal choice, it is a factor that directly affects the scope of the trademark's protection after registration. Therefore, it is necessary to carefully decide, taking into account the actual form of use within Canada and the long-term brand operation strategy.

The applicant's exact name and address is required. Both individuals and legal entities can apply, and Korean companies can also apply for Canadian trademark without any restrictions. An address in Canada or a local corporation is not required as an application requirement.

Designated goods and designated services must be listed in accordance with the Nice International Classification. Canada is a country that regards the stated clarity of the designated goods and services, and it is preferable to specify them specifically for products and services that are intended to be used in practice rather than for overly comprehensive or abstract expressions. This type of information may affect not only the screening phase, but also the scope of the rights and the response to the dispute after registration.

One of the biggest features of the Canadian trademark scheme is that it does not require the use of a trademark during the filing phase and the screening phase. While the U.S. trademark system requires a declaration of use or proof of use during the application or registration process, there is no such procedure in the Canadian trademark system.

Under the Canadian system:

- Actual use is not required at the time of filing.
- Evidence of use is not required during examination.
- A declaration of use is not required to obtain registration.

This means that even trademarks that have not yet been used can be applied for and registered in Canada, which allows for a preemptive acquisition of the trademarks that were intended for future use in the early stages of the business.

However, apart from these institutional characteristics, maintenance and use may be problematic at the post-registration and rights exercise stages, so a long-term trademark use plan should be considered together.

Once a Canadian registration has been on the register for three years, it may be subject to a summary non-use proceeding. Post-registration use and recordkeeping are therefore important.

Until three years have passed since registration, rights remain relatively stable regardless of the actual use of the trademark. However, after three years of registration, a third party may request to cancel the trademark for inactivity.

In the event that such a cancellation process is initiated, the trademark holder must demonstrate the following:

Whether the trademark was actually used in Canada
- Relevance between designated goods or use of designated services and trademarks
- Time and specific forms of use for which trademark is used

In view of this, Canadian trademark applications need to be approached with retention and rights stability in mind, rather than simply being registered. Especially important is the long-term strategy that takes into account the business plan and the timing of the trademark in the Canadian market.

In Canada, as in other countries, trademarks with no distinctiveness are difficult to register. If the expression is deemed to be sufficient to describe the nature or characteristics of a product or service, rather than the ability to identify a particular source, it is deemed to be deficient in distinctiveness .

In general, the following types of expressions are more likely to be judged as having no distinctiveness:

- English words that directly represent the ingredients of the product
- An expression describing the functions, uses, and quality of a product or service
- General names or terms that are routinely used in the industry

This is often the reason for refusal of registration due to the difficulty of performing functions as an indication of origin under the Canadian Trademark Act. Especially when describing the nature of a product or service in English or French, it is considered difficult for the average consumer to recognize it as a trademark.

There are additional considerations to consider if trademark contains a language other than English or French, such as Korean.

In Canada, you are required to submit a translation or transliteration of the expression if a language other than English and French is included in the trademark . This is not just a formal requirement, but a procedure for determining whether the expression is a product or service name, i.e., whether or not the expression is distinct. These judgments are an important factor in the audit process for the Canadian Intellectual Property Office.

For example, if a trademark contains a word that may be evaluated as having no distinctiveness in English, and a Korean expression with the same meaning is used, the examiner is likely to recognize the two expressions as being the same semantically. In this case, only the language is different, and it can be evaluated as using the same concept over and over again.

Therefore, trademark's distinctiveness is not automatically compensated or enhanced by the use of English and Korean expressions. Rather, the meaning of the entire trademark becomes more clear, and may also be perceived as an expression of the nature of the product or service, negatively affecting the possibility of registration.

Does combining non-distinctive English and Korean wording make registration impossible? Not necessarily; the overall mark must be considered.

In Canada, instead of judging trademarks individually by their components, we judge the possibility of registering based on how the entire trademark makes an impression on the average consumer. The concept of an important basis in this process is the dominant impression of the trademark.

In particular, the following factors are considered comprehensively:

Visual and conceptual impression of the entire trademark.
- Which element creates the dominant impression of the mark
- What are the key elements of the trademark that actually perform the source identification function

Even if the wording is non-distinctive, other elements may support registration if they create a distinctive overall impression and identify commercial source.

For example, consider the following trademark configuration:

- English words with no distinctiveness are most commonly displayed in the trademark (e.g., expressions such as LAW FIRM are used for legal-related designation services)

- If the logo or shape element is only on the simple decoration level

- If the Korean expression corresponds to an expression that translates the meaning of the English word

In such a configuration, even if consumers understand the trademark as a whole, they are more likely to understand the trademark around a word in English that has no distinctiveness. If a logo or a shape element is difficult to see as having independent distinctiveness , it can be determined that the dominant impression of the entire trademark was also formed by a statement without distinctiveness.

The mark may therefore lack the ability to identify commercial source and face difficulty obtaining registration in Canada.

On the other hand, in the case of the following trademark configuration, the possibility of registration can be evaluated relatively highly.

- An original and visually strong logo or shape element is at the center of the trademark.

- If the English word is placed relatively small compared to the logo and is recognized as an auxiliary element

- If the Korean expression is in an incidental position on the entire trademark

In such a configuration, when a consumer perceives a trademark, it is more likely to identify the source through a logo or a shape element than a phrase without distinctiveness. English words and Korean expressions serve as a secondary delivery of the meaning of the trademark, and the percentage of the dominant impression of the entire trademark can be considered relatively low.

A mark containing non-distinctive wording may nevertheless be registrable when the overall combination is distinctive. The key questions are which elements dominate the consumer's impression and which identify commercial source.

While the Canadian trademark application process itself is relatively simple, the decision on the possibility of registration is not simple. In particular, in the following cases, it is necessary to review the registration risk and composition strategy together before filing:

- If you want to use English words that directly describe the nature of the product or service
- If you want to include the Hangul brand in the trademark configuration, or if you want to include Hangul itself in the trademark configuration.
- If you want to secure trademark distinctiveness through logo or shape design

In such situations, it is not enough to submit a document, and it is important to review the visual and conceptual impression that the trademark as a whole conveys to the consumer. Specifically, it is necessary to design an application strategy, taking into account the ratio and arrangement between components, the role of each element, and what factors form the dominant impression of the trademark.

IPLEX draws on international trademark filing and examination experience, including in Canada, to assess distinctiveness and develop filing strategies. Its support includes registrability analysis, examination responses and dispute prevention.

A Canadian trademark strategy should consider registrability together with the stability and enforceability of the resulting rights.

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