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Foreign Associates: Information and Documents Needed for Canadian Trademark Application Filings in the Canadian Trademark Office

This page is intended to inform lawyers and trademark agents located outside of Canada as to what documents and information will be needed before the Canadian Trademark Office for a corresponding Canadian trademark application filing. If you are interested in services as a direct client, you need not review the information below before contacting us as we work with you to prepare an application and the associated filing documentation. Please see our services pages for further details.

Trademark

Required:

  • Identification of the filing applicable basis or bases (trademark use in Canada, trademark made known in Canada, trademark registered and used abroad, proposed trademark, certification mark used in Canada)
  • The name of the applicant and the full post office address of its principal office or place of business
  • The trademark to be applied for
  • The disclaimer, if any disclaimer is to be made

For trademark use in Canada:

  • Identification of any predecessors-in-title, if any
  • Identification of the general class of goods and the specific goods in which the trademark has been used in Canada by the applicant and any predecessor(s)-in-title and the applicable date(s) of the first use, if any
  • Identification of the general class of services and the specific services in which the trademark has been used in Canada by the applicant and any predecessor(s)-in-title and the applicable date(s) of the first use, if any
  • The address of the applicant’s principal office or place of business in Canada, if any
  • If the trademark has been duly registered by the applicant or the applicant’s predecessor’s in title named in such registration, to include a claim on the basis of a registration in or for the country of origin: the country of origin of the applicant or said predecessor and the name of the country or the office where the trademark is registered, the date of the registration and the registration number
  • Where convention priority is claimed: the name of the country of the Union in or for which the first application for registration of the trademark was filed and where the applicant or a predecessor was then a citizen or national or domiciled or had a real business, the name of the country or office where the application for registration was filed, the date of filing of the application and the application number (if available), and whether said applicant or predecessor was then a citizen of, was then a national of, was then domiciled in, or had a real and effective industrial or commercial establishment in said country of the Union
  • Confirmation that the applicant is satisfied that it is entitled to use the trademark in Canada in association with the goods and/or services

For trademark made known in Canada:

  • The specific goods in which the trademark has become well known in Canada by reason of the applicant and any predecessor(s)-in-title having used the trademark in association with such goods, the name of the predecessor-in-title who first made the trademark known in Canada in association with any of the specific goods, and the names of any intervening predecessors down to the applicant, the name of the Union country in which the trademark has been used in association with the specific goods, the applicable reason for becoming made known of the following statements: “the distribution of such goods in association with the trademark in Canada”, “the advertising of such goods in association with the trademark in printed publications circulated in Canada in the ordinary course among potential dealers in or users of such goods”, “the advertising of such goods in association with the trademark in radio or television broadcasts ordinarily received in Canada by potential dealers in or users of such goods”, the date when the trademark first became well known in association with any of the goods by reason of the distribution or advertising (give separate dates for each general class if the goods fall into different general classes)
  • The specific services in which the trademark has become well known in Canada by reason of the applicant and any predecessor(s)-in-title having used the trademark in association with such services, the name of the predecessor-in-title who first made the trademark known in Canada in association with any of the specific services, and the names of any intervening predecessors down to the applicant, the name of the Union country in which the trademark has been used in association with the specific services, the applicable reason for becoming made known of the following statements: “the advertising of such services in association with the trademark in printed publications circulated in Canada in the ordinary course among potential dealers in or users of such services”, or “the advertising of such services in association with the trademark in radio or television broadcasts ordinarily received in Canada by potential dealers in or users of such services”, the date when the trademark first became well known in association with any of the services by reason of the distribution or advertising (give separate dates for each general class if the services fall into different general classes)
  • Confirmation that the applicant is satisfied that it is entitled to use the trademark in Canada in association with the goods and/or services

For trademark registered and used abroad:

  • The name of the country of origin of the applicant or a predecessor in or for which the trademark is registered or has been applied for
  • The name of the country or the office where the trademark is registered and the date of registration or the name of the country or the office where the trademark was applied for and the date of filing of the application
  • The statement of goods as it appears in the registration(s) or application(s) abroad, so far as the statement extends to goods in association with which the trademark has actually been used in some country
  • The specific goods (described in the terms in which they are ordinarily and commercially described in the trade or business, which may differ from those used in the registration(s) or application(s) in or for the country of origin) in association with which the trademark has been actually used and in respect of which registration is requested, so far as they are covered by the registration(s) or application(s) in or for the country of origin
  • The name of the country in which the trademark has been used in association with the specific goods, or if the trademark has not been used in a single country in association with all the specific goods, but has been used in one country in association with some of the goods and in another country in association with others of the goods, the names of the two (or more) countries in question
  • The statement of services as it appears in the registration(s) or application(s) abroad, so far as the statement extends to services in association with which the trademark has actually been used in some country
  • The specific services (described in the terms in which they are ordinarily and commercially described in the trade or business, which may differ from those used in the registration(s) or application(s) in or for the country of origin) in association with which the trademark has been actually used and in respect of which registration is requested, so far as they are covered by the registration(s) or application(s) in or for the country of origin
  • The name of the country in which the trademark has been used in association with the specific services, or if the trademark has not been used in a single country in association with all the specific services, but has been used in one country in association with some of the services and in another country in association with others of the services, the names of the two (or more) countries in question
  • Confirmation that the applicant is satisfied that it is entitled to use the trademark in Canada in association with the goods and/or services

For proposed trademark:

  • The specific goods (described in ordinary commercial terms), if any, in association with which the applicant by itself or through a licensee, or by itself and through a licensee, intends to use the trademark in Canada
  • The specific services (described in ordinary commercial terms), if any, in association with which the applicant by itself or through a licensee, or by itself and through a licensee, intends to use the trademark in Canada
  • Confirmation that the applicant is satisfied that it is entitled to use the trademark in Canada in association with the goods and/or services

For certification mark used in Canada:

  • The specific goods in association with which the certification mark has been used in Canada by licensee(s) of the applicant or its predecessor(s), and identification of the predecessors-in-title, if any, that licensed the certification mark for use in Canada in association with those goods and for which the certification mark has been used by said licensee(s) in association with those goods
  • The particulars of the defined standard that the use of the certification mark in association with the specific goods is intended to indicate
  • The specific services in association with which the certification mark has been used in Canada by licensee(s) of the applicant or its predecessor(s), and identification of the predecessors-in-title, if any, that licensed the certification mark for use in Canada in association with those services and for which the certification mark has been used by said licensee(s) in association with those services
  • The particulars of the defined standard which the use of the certification mark in association with the specific services is intended to indicate
  • Confirmation that the applicant is satisfied that it is entitled to use the certification mark in Canada in association with the goods and/or services