CPATA TM Knowledge Exam cheat sheet

The Act defines a trademark as a sign or combination of signs used or proposed to be used by a person to distinguish their goods or services from those of others; signs include words, personal names, designs, letters, numerals, colours, shapes, sounds, scents, tastes, textures, holograms, and position marks.

Section 9 absolute prohibitions cover prohibited marks: official signs, flags and armorial bearings of Canada and other countries, Red Cross/Red Crescent emblems, and protected public authority names; no application may proceed without consent or a court order.

Section 12(1) registrability bars: (a) names in any language of wares/services, (b) clearly descriptive of character or quality, (c) deceptively misdescriptive, (d) confusion with a registered trademark, (e) any of (a)-(c) in the English or French language.

Section 2 defines confusing as use of a trademark causing confusion with another trademark; section 6 sets the confusion test: whether use of both in the same area would likely lead to the inference that the wares/services come from the same source, considering all surrounding circumstances.

Section 6(5) surrounding circumstances: inherent distinctiveness and acquired distinctiveness, length of time of use, character of the wares/services/trade, nature of the trade, and degree of resemblance in appearance, sound, connotation, and ideas suggested.

Section 16 entitlement: an applicant is entitled to registration unless the trademark is confusing with a trademark previously used or made known in Canada, a previously filed application, or a previously used trade name; the relevant date is the filing date or the date of first use if earlier.

Section 17 gives a prior user a right to oppose based on prior use; section 17(2) allows the Registrar to refuse an application where the applicant is not the person entitled to registration.

The Regulations set filing requirements: Form 1 application, application fee per class under the Nice Classification (Canada adopted Nice in 2019), and a statement of wares/services grouped by class with specific, ordinary commercial terms.

The Act distinguishes certification marks (section 2, used to certify standards), distinguishing guises (section 2, shape/wares packaging), and proposed-use marks; certification marks cannot be licensed to the owner.

Absolute grounds under section 12(1) bar registration; descriptiveness is assessed from the perspective of the average purchaser of the wares/services, not a specialist, and includes misspellings and foreign-language equivalents.

A trademark that is clearly descriptive may be registered only if it has acquired distinctiveness under section 12(2) before the filing date; evidence must show the mark has become distinctive in Canada.

Deceptively misdescriptive marks (section 12(1)(c)) are barred where the mark misleads about character, quality, or place of origin; a mark that is merely suggestive or allusive is registrable.

Section 12(1)(a) bars names of wares/services in any language; the test is whether the mark is the name of the wares/services as known in the trade, not merely a word associated with them.

Section 12(1)(d) bars marks confusing with a registered mark; section 16 bars marks confusing with previously used or made-known marks; the confusion test under section 6 applies in both cases.

Section 14 bars registration of marks that are not distinctive in Canada unless the mark is distinctive in the applicant's country of origin and the applicant's country is a Paris Convention or WTO member; the mark must not be confusing in Canada.

Section 15 allows registration of a trademark that is not inherently distinctive if it has acquired distinctiveness; the applicant must file evidence of use and distinctiveness.

Section 12(1)(e) bars registration of marks that are the English or French equivalent of a name in another language; the test is whether the mark is the name of the wares/services in another language.

Section 9 prohibited marks cannot be registered without consent; the Registrar may refuse registration of a mark that is confusing with a prohibited mark.

Entitlement is determined at the filing date or the date of first use, whichever is earlier; a prior user in Canada can oppose under section 16(1) or section 17(1).

Filing: submit Form 1 with applicant name, address, wares/services grouped by Nice class, a representation of the mark, and the application fee per class; a filing date is obtained when the Registrar receives the application and fee.

Examination: the Registrar examines for compliance with section 12 and section 9; the examiner issues a report (office action) with objections, and the applicant has six months to respond, extendable on request.

The examiner may issue a section 12(1)(a) or (b) objection, a section 12(1)(d) confusion objection citing a registered mark, or a section 9 prohibited-mark objection; responses must address each objection specifically.

If the examiner maintains an objection, the applicant may request a review by the Registrar or appeal to the Federal Court under section 56 within two months of the decision.

Approval and advertisement: once the application is approved, it is advertised in the Trademarks Journal; any person may oppose within two months of advertisement, extendable by the Registrar.

The applicant must respond to an opposition within two months of receiving the statement of opposition; failure to respond results in the application being deemed abandoned.

Registration issues after the opposition period expires or the opposition is decided in the applicant's favour; the registration certificate is issued and the mark is entered on the register.

The applicant may amend the application to narrow wares/services or to add a disclaimer; amendments that broaden the scope are not permitted after filing.

Section 40 allows the Registrar to require a statement of use for proposed-use marks; the applicant must file a declaration of use before registration.

An opposition is commenced by filing a statement of opposition within two months of advertisement; the grounds must be set out in detail and include the statutory basis (e.g., section 16(1), section 12(1)(d), section 9).

The applicant files a counterstatement within two months; the opponent files evidence within four months of the counterstatement, and the applicant files evidence within four months thereafter.

Cross-examination is available on affidavits filed in opposition; the opposing party may cross-examine within the time limits set by the Registrar.

The opponent files a written argument within two months of the close of evidence, and the applicant files a written argument within two months thereafter; an oral hearing may be requested.

The Registrar's decision may be appealed to the Federal Court under section 56 within two months; the appeal is a trial de novo on the record with additional evidence permitted.

Section 45 expungement proceedings: any person may request the Registrar to expunge a registration for non-use; the registered owner must show use in Canada during the three-year period preceding the request.

Section 45(3) allows the Registrar to expunge a registration for non-use if the owner fails to show use or special circumstances excusing non-use; the burden is on the owner.

An opposition may be settled by consent; the Registrar may give effect to a settlement agreement if it is consistent with the Act.

The Registrar may award costs in opposition proceedings under section 66; costs are discretionary and may be awarded to the successful party.

Registration term: 10 years from the date of registration; renewal may be requested within six months before expiry, and a grace period of six months after expiry is available on payment of a surcharge.

Renewal fee is per class; failure to renew results in expungement of the registration from the register.

Section 48 allows the registered owner to request an amendment of the register to correct errors or to change the owner's name or address; amendments that affect the scope of the registration are not permitted.

Recordal of assignments: the assignment must be in writing and signed by the assignor; the Registrar records the assignment on request and payment of the fee; recordal is not mandatory but affects priority against subsequent purchasers.

Recordal of licences: a licence must be recorded to be effective against third parties; the registered owner remains liable for the quality of the wares/services.

Section 50 allows the Registrar to amend the register to reflect a change of ownership; the request must be accompanied by evidence of the change.

Section 45 expungement may be initiated at any time after registration; the owner must show use during the three-year period preceding the request.

A registration may be expunged by the Federal Court under section 57 on the ground that the mark was not registrable at the filing date or has become generic.

Section 53 allows the Registrar to correct clerical errors in the register; corrections must not affect the substantive rights of the parties.

Renewal does not require proof of use; the owner simply pays the fee and the registration is renewed for another 10 years.

A trademark agent must be licensed by the College of Patent Agents and Trademark Agents (CPATA); practising without a licence is an offence under the College's bylaws.

The agent must act in the client's best interest, maintain confidentiality, and avoid conflicts of interest; a conflict must be disclosed and the client's informed consent obtained.

The agent must provide a retainer agreement that sets out the scope of work, fees, and disbursements; the client must receive a clear estimate of costs.

The agent must maintain client funds in a separate trust account and account for them; commingling with the agent's own funds is prohibited.

The agent must keep client records for a minimum period (generally seven years) and must protect client confidentiality.

The agent must not advertise in a misleading manner; advertising must comply with the College's code of professional conduct.

The agent must report any criminal conviction or professional discipline to the College within a specified time.

The agent must not act for a client where the agent has a personal interest in the matter without full disclosure and consent.

The agent must ensure that deadlines are met; missing a deadline may constitute professional negligence and must be reported to the client and the insurer.

The Paris Convention (1883) provides priority rights: an applicant may file in another member country within six months of the first filing and obtain the original filing date.

The Madrid System (Madrid Agreement and Protocol) allows a single international application to designate multiple member countries; Canada acceded to the Madrid Protocol in 2019.

A Madrid application must be based on a basic application or registration in the applicant's home country; the international registration is examined by each designated country under its own law.

The Nice Classification (45 classes) is used by Canada and most countries; the applicant must group wares/services by class and pay fees per class.

The TRIPS Agreement sets minimum standards for trademark protection, including a seven-year minimum term and protection of well-known marks.

The WTO dispute settlement system may be used to enforce TRIPS obligations; Canada is a member of the WTO.

The Singapore Treaty on the Law of Trademarks harmonizes procedural requirements; Canada has not ratified it.

The Andean Community, Mercosur, and the African Regional Intellectual Property Organization (ARIPO) provide regional trademark systems; applicants should consider regional filings.

The European Union Intellectual Property Office (EUIPO) provides a unitary trademark for the EU; a Canadian applicant may file directly or via the Madrid System.

Passing off at common law requires the plaintiff to show goodwill, misrepresentation, and damage; the test is whether the defendant's conduct is likely to deceive the public.

Section 7 of the Trademarks Act codifies passing off and prohibits false or misleading statements about wares/services; section 7(b) prohibits misleading advertising.

Copyright protects original artistic works, including logos and packaging; a trademark may also be protected by copyright if it meets the originality threshold.

Industrial designs protect the appearance of a product; a design may overlap with a distinguishing guise, and the applicant must choose the appropriate protection.

Patents protect inventions; a trademark may be used to identify a patented product, but patent expiry does not affect trademark rights.

The Competition Act prohibits misleading advertising and deceptive marketing practices; a trademark that is misleading may violate the Act.

The Copyright Act provides moral rights, which may affect the use of a logo created by an employee or contractor.

The common law tort of breach of confidence may protect confidential information, including trade secrets and customer lists.

Domain names are governed by the Internet Corporation for Assigned Names and Numbers (ICANN) and the Canadian Internet Registration Authority (CIRA); a trademark owner may use the Uniform Domain-Name Dispute-Resolution Policy (UDRP) to recover a domain name.