CPATA TM Knowledge Exam key terms

The ordinary-course transfer of goods or services in association with a trademark, including export and distribution for sale. It anchors validity, registration, and entitlement, and must be continuous to avoid expungement for non-use.

An application filed on the basis that the applicant intends, but has not yet begun, to use the mark in Canada. Registration issues only after a declaration of use is filed, unless the basis is foreign use and registration.

A statement filed with CIPO confirming that use of the applied-for mark in Canada began after the filing date. It must be filed before registration can issue for a proposed use application, and the mark must be used on all listed goods and services.

The test under section 6 of the Trademarks Act: whether an ordinary consumer with a vague recollection of the earlier mark would, on first impression, likely mistake the later mark for it. All surrounding circumstances are weighed.

The degree of visual, phonetic, and conceptual similarity between two marks, assessed as a whole rather than by dissecting components. It is one surrounding circumstance in the confusion analysis, not a standalone test.

The principle that consumers rarely retain exact details of a mark, so confusion is assessed based on an imperfect, general memory. This lowers the threshold for finding marks confusingly similar.

The capacity of a mark to identify goods or services from one source and distinguish them from others. It is both a registrability requirement and a ground of invalidity, and it can be lost through licensing without control or generic use.

A word that has become the common name for a product or service, losing trademark significance. Generic marks cannot be registered or enforced, and a registered mark may be expunged if it becomes generic.

A mark that describes a character or quality of the goods or services in a way that is self-evident to a consumer. Clearly descriptive marks are unregistrable unless they have acquired distinctiveness through use.

Distinctiveness gained through extensive use and promotion, allowing registration of an otherwise descriptive or deceptively misdescriptive mark. The applicant must show the mark has become known as a source identifier.

A mark that misleads consumers about a character, quality, or place of origin of the goods or services. It is unregistrable unless acquired distinctiveness is shown, and it differs from a mark that is merely suggestive.

A mark that is primarily merely the surname of an individual who is living or has died within the preceding thirty years. It is unregistrable unless it has acquired distinctiveness or the name has a secondary meaning.

A mark adopted by a public authority or a university that CIPO must refuse to register to others under section 9, without requiring use or confusion. It provides broad protection against registration of confusingly similar marks.

A mark whose adoption or use is prohibited by section 9 of the Trademarks Act, such as national symbols, royal arms, and protected official marks. Registration must be refused if a mark is confusing with a prohibited mark.

A ground of opposition alleging the applicant filed without a genuine intention to use the mark or for an improper purpose. It reflects the principle that trademark rights must be acquired honestly and not through abusive filing strategies.

A proceeding before the Trademarks Opposition Board in which a third party challenges a pending application after advertisement. The opponent must plead grounds within the statutory deadline, and the applicant bears the burden of showing entitlement.

The pleading filed by an opponent setting out the grounds of opposition and supporting facts within two months of advertisement. Grounds must be sufficiently detailed, and the opponent bears the initial burden of proof.

The applicant's reply to a statement of opposition, filed within the prescribed period, admitting or denying each ground. Failure to file it results in the application being deemed abandoned.

The usual means of adducing evidence in opposition proceedings, filed with the Registrar and subject to cross-examination. Affidavits must be based on personal knowledge and attach supporting exhibits.

The oral questioning of a deponent on their affidavit in opposition or expungement proceedings. It tests credibility and the sufficiency of the evidence, and the transcript becomes part of the record.

A proceeding under section 45 or by court action to remove a registration for non-use or invalidity. In section 45 proceedings, the registered owner must show use during the relevant period or face removal.

A summary administrative proceeding in which the Registrar requires the registered owner to show use of the mark in Canada during the three-year period preceding the notice. The owner must evidence use on each registered good or service.

The absence of use of a registered mark for an extended period, which can lead to expungement. Special circumstances excusing non-use may preserve the registration if the owner establishes them.

The periodic maintenance of a trademark registration, currently every ten years, by paying the prescribed fee. Failure to renew results in expiry, though a grace period and reinstatement may be available.

The registration with CIPO of changes affecting a mark, such as assignments, changes of name, or security interests. Recordal is required for the change to be effective against third parties.

The transfer of ownership of a trademark, which may be with or without the goodwill of the business. Assignments should be recorded with CIPO, and a mark cannot be assigned in a way that deceives the public.

Granting another party permission to use a mark, which may be recorded with CIPO. The owner must control the character or quality of the goods or services to preserve distinctiveness and avoid abandonment.

The right, under the Paris Convention, to claim the filing date of an earlier application in a member country as the effective date for a Canadian application, if filed within six months.

An international treaty allowing a single application to seek protection in multiple member jurisdictions through the World Intellectual Property Organization. Canada is a member, and the protocol interacts with domestic examination and opposition.

A registration obtained through the Madrid System that designates member jurisdictions. It is examined under domestic law in each designated jurisdiction, and protection may be refused by the local office.

The international system classifying goods and services into classes for trademark applications. Canadian applications must group goods and services by class and pay fees per class.

A written report from CIPO raising objections to an application, such as descriptiveness or confusion. The applicant must respond within the prescribed period, and failure to do so results in abandonment.

The date on which a complete application is received by CIPO, establishing priority over later applications. It is critical for entitlement and for assessing prior use and confusion.

The trademark agent appointed by an applicant or owner to act before CIPO, who receives correspondence and bears professional duties. Canadian practice requires agents to be licensed and to follow the Code of Professional Conduct.

A situation where an agent's duties to one client conflict with duties to another or with personal interests. It must be avoided or managed with informed consent, and it can lead to disqualification or discipline.

The professional duty to act competently, communicate clearly, protect client confidences, and follow instructions. It includes advising on risks, deadlines, and costs, and it underpins the agent-client relationship.

A common law tort protecting the goodwill of a business against misrepresentation likely to confuse the public. It requires goodwill, misrepresentation, and damage, and it can be pleaded alongside statutory trademark infringement.

A form of infringement where use of a similar mark lessens the value of the goodwill attached to a registered mark. It requires use in association with goods or services and is assessed without requiring confusion.

The loss of trademark rights through intentional cessation of use with no intention to resume. It can be a ground of expungement, and it differs from mere non-use that is excused by special circumstances.