Unravel the mysteries of the trademark opposition and appeal process in Canada with amy thomas – a critical journey to protect your brand and strengthen your market power

Unravel the mysteries of the trademark opposition and appeal process in Canada with amy thomas – a critical journey to protect your brand and strengthen your market power

Honour in Collaboration: Moffat & Co’s Role in Shaping “Trademark Opposition and Appeals in Canada”
At Moffat & Co, we are thrilled to highlight our participation in developing the insightful and authoritative article, “Trademark Opposition and Appeals in Canada,” authored by our esteemed partner, Amy Thomas. This article offers a deep dive into the nuanced and complex world of trademark law in Canada, providing essential guidance for anyone navigating this challenging landscape.

Amy Thomas brings over two decades of expertise to her writing, which is evident in the clarity and depth of the article. She meticulously outlines the procedures and intricacies involved in opposing trademark applications and launching appeals, making this article a vital resource for businesses and legal professionals alike. From the initial stages of filing an opposition to navigating the appeals process, the article serves as a comprehensive guide to understanding and effectively managing trademark disputes in Canada.

One of the core strengths of the article is its detailed explanation of who can file oppositions, the strategic considerations involved, and the potential outcomes of these proceedings. Amy’s expertise shines through as she explains the critical importance of trademarks in securing a business’s branding and its implications on the wider market.

At Moffat & Co, we are proud of our contribution to this valuable publication and of our robust team of intellectual property professionals. Our firm is equipped with an exceptional professional team, litigation team, and technical support for filing patents and trademarks. We are committed to providing our clients with comprehensive and competent technical services that cover all aspects of intellectual property protection, ensuring their innovations and intellectual assets are secured and well-managed.

As leaders in the field of intellectual property, Moffat & Co continues to foster a culture of excellence and innovation, empowering our clients to thrive in competitive markets. Whether you are looking to safeguard your creative inventions or navigate the complexities of trademark law, Moffat & Co is your trusted partner in intellectual property protection.



Kevin A. Jarzyna
BScE (Mechanical Engineering) Registered Patent Agent in Canada;
works with Moffat & Co and Macera & Jarzyna in Ottawa, Canada.
E-mail: [email protected]

Keywords: Canada, Patents, Examination Practice, Excess Claims

With the amendments to the Canadian Patent Rules now in effect, Applicants are now faced with the possibilities of Requests for Continued Examination and Excess Claim fees. This article outlines the different challenges presented, as well as some possible strategies to implement going forward.


On October 3, 2022, amendments to the Canadian Patent Rules came into effect. The amendments introduced excess claim fees for more than 20 claims on file at any time after the request for examination is filed and the need to file Requests for Continued Examination (RCE), with an additional fee, to continue examination once a third office action has been issued. One goal of these new rules is to streamline the examination process and reduce the number of patent applications pending.

These changes are related to the recent Canada-United States-Mexico Agreement (CUSMA), which requires that Canada adopt a new patent term adjustment (PTA) system by January 1, 2025. The new PTA system will compensate patent owners for “unreasonable delays” in the processing of their patent applications. The Canadian Patent Office is therefore encouraged to greatly reduce prosecution time.


Excess fees for claims in excess of 20 are aimed to limit the number of claims in an application, while RCEs are aimed to reduce the number of Office Actions. These concepts are familiar to those practicing at the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). While excess claims fees are now common in these jurisdictions, there are important differences that provide additional challenges in Canada.

In the United States, there are mechanisms to manage the issue by filing additional applications such as Continuation Applications or Continuation-in-part Applications. In Canada, there are no such mechanisms, and the only option is to file a divisional application. However, the filing of multiple applications raises the issue of the judicially derived concept of double patenting (“same invention” or “obvious-type”), which is intended to prevent more than one patent being issued with claims protecting the same subject matter. United States patent law allows applicants to file terminal disclaimers (where the term of a second patent ends at the same date as a first patent directed to a similar invention) to address double patenting objections. However, Canada does not allow terminal disclaimers. If the claims of a divisional application are not patentably distinct from the issued parent, the claims may not be allowable and the applicant may then have no recourse available to obtain those claims.


One way to resolve the double patenting issue is to include claims for any and all possible embodiments in the parent application, thereby eliciting a stance from the Examiner regarding unity of invention. If the Examiner raises a unity objection, the Applicant is then free to file a divisional application free from any possible double patenting allegations. However, this option may now require payment of excess claim fees. Furthermore, this strategy may prolong examination because an office action may be issued simply to raise a unity of invention objection before substantive examination of the claims takes place, increasing the chance that an RCE will be required to complete prosecution before the application is allowed.

One strategy is to include independent claims directed to all desired embodiments of the invention in the original application, while limiting the overall number of claims to 20 or fewer, thus eliminating excess claim fees. This will force the Examiner to establish a stance on unity. If a unity objection is raised, any non-elected claims may become the subject of a divisional application without the risk of a double patenting objection. However, in the case where a unity of invention objection is not raised and the application proceeds directly to allowance, the applicant is left with the possibility of having to withdraw the Notice of Allowance and file an RCE to add important dependent claims that were left out of the original application.

A possible solution is to use alternative/optional language. For example, a single dependent claim could be drafted by combining features of two or more dependent claims using language such as “or”, “and/or”, “optionally”, “preferably”, “in particular” or the like. Since such alternative/optional language is generally not permitted in Canada the Patent Office will almost certainly object. However, the goal is not to get the claims allowed but to keep the claim number as low as possible, while at the same time having the maximum amount of subject matter considered by the examiner. It also guarantees at least one Office Action.

Unfortunately, there are many instances where Canadian Examiners do not raise any objections towards a particular claim in a first Office Action, only to reject it at a later time. Since Applicants will now have to pay for RCEs to extend prosecution beyond the first two office actions, the hope is that Examiner training will improve, and these problems will be alleviated.

In conclusion, with the new Canadian Patent Rules there are new issues to consider, and no two patent applications are alike. Devising claim reduction strategies in Canada will require a delicate balance between excess claim fees, RCE costs, and the desired scope of protection for the invention. It will be up to each Applicant to determine how much time, and money, they are willing to invest to protect different aspects of an invention.

Of course, that is where having a knowledgeable patent agent to address these issues can provide great benefit. With over 45 years of experience, Moffat & Co. ensures that all of our Canadian and international clients receive efficient and effective intellectual property protection and guidance, in Canada and throughout the world.

Bill 96 – impact on ip practice

Bill 96 – impact on ip practice

by Mark Butler

On June 1, 2022, the National Assembly of Quebec passed Bill 96, An Act respecting French, the official and common language of Quebec. The purpose of the Act, from the Explanatory Notes, is to affirm “that the only official language of Quebec is French” and “that French is the common language of the Quebec nation.” In line with this broad yet pointed purpose, the Act enacts a wide-ranging series of amendments to various provincial statutes.

At the centre of these amendments, and unsurprisingly given their purpose, are changes made to the Charter of the French Language. The Charter is not a new document, having been first adopted in 1977, and persons doing business in Quebec have long been accustomed to compliance with its various requirements. Importantly, certain amendments to the Charter have implications for the use of trademark rights in La belle province.


The Changes to the Law

Pre-amendment, under regulation made pursuant to the Charter, recognized trademarks within the meaning of the federal Trade Marks Act could be displayed in a language other than French if there was no French version of the mark that was registered. This meant that non-French marks did not need to be registered in order to be exempt from the requirement that they appear in French on products—it was sufficient that they be ‘recognized’. Because of this, common law trademarks and marks in the process of being registered qualified for the exemption.

Bill 96 changes this exemption, now limiting it to only ‘registered’ trademarks within the meaning of the Trademarks Act. Registration is, obviously, a higher threshold than recognition, and therefore many non-French marks which benefitted from the previous exemption will no longer be so exempted. Once this amendment comes into force, only registered trademarks under the federal Act without a registered French version will be able to be displayed on products in a language other than French. However, the requirement does not stop there.

Where a registered trademark with no French version does benefit from the new exception, generic and descriptive terms included in the trademark will still need to appear in French on products on which the trademark is displayed. This requirement is aimed at preventing trademark owners from tacking words on to their registered non-French trademarks in an attempt to obviate the need for translation. While debating the Bill, Simon Jolin-Barrette, then Minister Responsible for the French Language, gave the example of “Softsoap Brand, Lavender and Shea Butter, washes away bacteria, deeply moisturize to hydrate skin”. According to Minister Jolin-Barrette, only ‘Softsoap Brand’ would not need to be translated.

Additional changes impacting trademark use come in the form of new requirements surrounding public signage. Under the new amendments, registered trademarks without registered French versions may appear on public signs, posters and in commercial advertising without a French version. But, where public signs and posters are visible from outside premises, French must be ‘markedly predominant’. This means that non-French registered marks ‘visible from the outside of premises’ must be accompanied by ‘markedly predominant’ French text.

The amendments to trademark display on products and public signage discussed in this section will come into force on June 1, 2025.

What this Means for Trademark Owners and Users

Many owners of non-French marks that do not qualify as registered trademarks under federal law will need to take action to continue using their marks after the coming into force of the above amendments in June of 2025. Registration of non-French versions of marks is the surest way to be compliant under the new laws. Given the lengthy delays in examination with the federal Trademark Office, trademark owners should act immediately where they wish to obtain registrations for their non-French marks, and may consider means of expedited examination, where possible.

Where trademark owners own registered marks without French versions, they should still check their marks for generic or descriptive language, as the new law states that such language must be translated even where the mark is registered with no French version.

Finally, trademark owners should be cognizant of how their marks are displayed in public. Where non-French registered marks are legitimately displayed and visible from the outside of premises, they should be accompanied by French text that would appear to passersby to be ‘markedly predominant’.

Contracts in Licensing

The Changes to the Law

Bill 96 enacts important changes to the language requirements of contracts of adhesion (where the terms are dictated by one party). Henceforth, parties may enter into non-French contracts of adhesion, but only where they have first had the opportunity to inspect a French version of the contract. One type of contract to which this requirement does not apply is ‘a contract used in relations with persons outside Quebec’.

Where parties have agreed to enter into a contract exclusively in English, any other materials related to that contract may also be drawn up in English.

These changes come into force on June 1, 2023.

What this Means for Franchisors

In the context of trademark ownership, the above changes to the law of contracts in Quebec will likely have implications for franchisors. In licensing marks in Quebec, the new language requirements in the formation of contracts of adhesion will be important where such contracts are used. Unfortunately, at this time it is not clear just exactly how wide of a scope is contemplated by the phrase ‘in relations with persons outside Quebec’. As this phrase comes to be better defined by the legislature, the courts, and the administrative officials tasked with upholding the Charter of the French Language, franchisors will come to better understand whether and to what extent they can qualify for this exemption.

by Mark Butler

Client alert – changes to patent examination procedure in Canada

Client alert – changes to patent examination procedure in Canada

by Janice Kelland

Recent amendments to the Canadian Patent Rules which will affect the cost of examining patent applications in Canada have just been registered and will be in effect before the end of the year.

These requirements can be avoided if a request for examination is filed before October 3, 2022.

Excess claims fees will be required:

when examination is requested:

Effective October 3, 2022, if a patent application has more than 20 claims when examination is requested, an additional government fee of $100 CAD per additional claim must be paid. For example, if an application has 25 claims when examination is requested, the government examination fee will be increased by $500. A 50% reduction of this fee (to $50 CAD per additional claim) applies if small entity fees are paid for the application.

A voluntary amendment can be filed at the time examination is requested to reduce the number of claims for which excess claims fees must be paid.

when the final issuance fee is paid:

As well, if more claims than were paid for at the time examination was requested are added to the application at any time before the application is allowed, even if they are deleted before allowance, excess claims fees to pay for the further added claims will be included in the final fee which must be paid for grant of the patent. Fees are due for claims which add to the total number of claims on file at any one time, not for claims which simply replace deleted claims without increasing the total number.

Examples of calculations are summarized below:

No. of claims in application when examination requested Additional examination fee for excess claims Max. no. of claims presented at any time during examination No. of claims in application at allowance Additional final fee for excess claims
20 or fewer $0 20 + x 20 + x or fewer $100x ($50x)
20 + x $100x ($50x) 20 + x 20 + x or fewer $0
20 + x $100x ($50x) 20 + x + y 20 + x + y or fewer $100y ($50y)

Requests for continued examination will be required if more than two office actions are issued

A further new requirement coming into effect on October 3, 2022 is related to the number of examination reports issued by the Examiner during examination of the patent application.

If the examiner issues a third report identifying defects in the application that need to be addressed before the patent can be granted, a request for continued examination (RCE) will need to be submitted along with payment of a government fee of over $800 CAD. Again, a 50% reduction of this fee applies if small entity fees are paid for the application.

If a further two examiner’s reports are issued after a request for continued examination has been filed, a further RCE must be filed along with payment of an additional government fee. Issuance of examiner’s reports and filing of requests for continued examination can continue until the application is allowed, finally refused or abandoned.

If you wish to proactively file a request for examination for one or more applications before October 3, 2022 to prevent these additional government fees being applied, or if you have any questions or would like more information, please contact us – we are happy to help.

Download a PDF version of this notice.

by Janice Kelland