Trademark fundamentals and sources of law
This domain tests whether you can locate the governing rule in the right instrument before applying it. CTA questions here turn on definitions, on what qualifies as a trademark, and on the relationship between the statute, the regulations, and the common law of passing off.
The statutory architecture
- Trademarks Act, R.S.C. 1985, c. T-13 - registrability, entitlement, use, infringement and remedies.
- Trademarks Regulations, SOR/2018-227, in force 17 June 2019 - filing requirements, classification, fees, opposition and section 45 procedure.
- Federal Courts Act and Rules - appeals from Registrar decisions (s. 56) and expungement actions (s. 57).
- Treaties: Paris Convention (priority), Nice Agreement (classification), Madrid Protocol and Singapore Treaty, all binding on Canada since 17 June 2019; TRIPS sets minimum standards.
What the Act protects
Section 2 defines a trademark as a sign or combination of signs used to distinguish goods or services. "Sign" expressly includes words, personal names, designs, letters, numerals, colours, figurative elements, three-dimensional shapes, holograms, sounds, scents, tastes, textures, positioning and motion. Certification marks (s. 23) and distinguishing guises (s. 13) are separate categories. Use is defined in s. 4: for goods, in the normal course of trade, marked on the goods or packaging or otherwise associated with them; for services, in the performance or advertising of the services. Distinctiveness (s. 2) runs through the whole Act - a mark can be registered and later invalid for loss of distinctiveness.
Worked example
A client asks whether a single colour applied to a product can be registered. Colour is a "sign" under s. 2, so it is not excluded at the threshold. An examiner will still ask whether the colour is clearly descriptive (s. 12(1)(b)) and whether it actually distinguishes the client's goods (s. 2). The answer is a filing strategy: describe the mark precisely, consider a colour-plus-shape designation, and prepare distinctiveness evidence dated to the filing date in case of a s. 12(2) or s. 38(2)(d) objection.
Traps that cost marks
- Applying pre-2019 law: 15-year terms, declarations of use and "wares" are gone.
- Treating a Nice class as defining scope of protection.
- Assuming registration cures a lack of distinctiveness.