Three sections of the Trade Marks Act (Chapter 385) complete the application process and start the clock on the registration.
Section 44 — the Registrar registers the mark
Subject to section 33(6), after the expiration of the period allowed under section 40(1), if no notice of opposition has been given, or if such notice has been withdrawn, the Registrar shall register the trade mark in the appropriate part of the Register.
Subject to section 33(6), where notice of opposition was given and the decision of the Registrar or of the Court is that the mark should be registered, the Registrar shall register it after expiration of the period allowed for appeal from that decision.
The duty is expressed as “shall register” — but it is subject to section 33(6) in both cases. Until the entry is actually made, the Registrar retains power to withdraw the acceptance where the application was accepted in error, or where in the special circumstances of the case the mark should not be registered or should carry different conditions or limitations.
Section 45 — the date relates back
Subject to this Act, on the registration of a trade mark the date of lodgement of the application with the Registrar shall be deemed to be the date of registration, and the mark shall be deemed, for the purposes of this Act, to have been a registered trade mark from that date.
Registration may take months or years. Section 45 backdates it to lodgement, so priority is decided by the order of filing, not the order of grant. Everything that depends on the date of registration runs from the day the application was lodged.
| Provision | What turns on the date |
|---|---|
| s 24(1) | A conflicting mark is registrable only if its date of registration is earlier |
| s 26(2) | A prior user must show use before the other proprietor’s use or date of registration, whichever is earlier |
| s 55(1)(c) | The prior-use defence runs from the registered proprietor’s use or registration, whichever is earlier |
| s 46 | The 10-year term runs from it |
| s 51 | The three-year limitation on removing a Part A mark for non-registrability |
| s 52 | Conclusive validity of a Part A registration after 10 years from the original registration |
| s 47(1) | Generic use is measured from after the date of the registration |
| s 73(5) | An assignment cannot be held invalid except in proceedings begun within three years after registration of the assignment |
Where part of a mark, or a narrower set of goods, is taken into a further application before acceptance or refusal, the Registrar may direct that it be deemed to have been lodged on the date of the original application. That direction is what preserves priority through a division.
Section 46 — 10 years, renewable
(1) The registration of a trade mark shall be for a period of 10 years.
(2) The registration may be renewed from time to time in accordance with this Act.
Section 60 provides for renewal for a further period of 10 years from the expiration of the last registration, and there is no limit on the number of renewals. Unlike a patent or a copyright term, a trade mark can last indefinitely — as long as it is renewed, and as long as it continues to be used and to be distinctive.
- Non-renewal. Under section 61(2), if the renewal conditions are not met within the prescribed time the Registrar may remove the mark — with restoration possible for 12 months under section 62.
- Non-use. Under section 14, three years of continuous non-use, or registration without a good faith intention to use, exposes the mark to removal by the Court.
- Rectification. Under section 13, an entry wrongly made or wrongly remaining may be deleted or amended, or a registration cancelled or varied for breach of a condition or limitation.
What the entry records, and what it proves
Section 6(1) requires the Register to contain particulars of all registered trade marks and such other matters as are prescribed — in practice the mark, the proprietor, the address and address for service, the goods, the class, the Part, the date of registration, any disclaimers, conditions and limitations, any associations, and any registered users and assignments. Under section 7 a notice of trust is never entered.
Once entered, the registration proves itself. Under section 10 the Register is evidence of all matters required to be entered in it, a certified copy or extract is admissible without further proof, and a certificate of the Registrar is evidence of its contents. Under section 50 the original registration is deemed valid unless the contrary is shown, and section 92 allows a registered mark to be identified in pleadings and proceedings simply by its registered number, without setting out a copy or description.
The day after registration
- Obtain a certified extract under section 9 and keep it with the corporate records.
- Diary the renewal — 10 years from the lodgement date, not the entry date.
- Start the use file: dated invoices, packaging, advertising, by year and by province.
- Keep the address and address for service current under sections 96 and 97.
- Register any licensee as a registered user, so that their use counts as yours under section 69(1).
- Use the mark as a mark — alongside, not instead of, the generic name of the product, to guard against section 47.
Sources
- Trade Marks Act (Chapter 385) — ss 6, 7, 9, 10, 13, 14, 24, 26, 33–34, 40, 44–47, 50–52, 55, 60–62, 69, 73, 92, 96, 97
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.