If you use a trademark in the Canadian marketplace without legal registration, you still have rights to that mark according to the “common law”. However, these rights are more limited than those provided when you obtain the registration of your trademark.
According to the Canadian Intellectual Property Office (CIPO), trademark filings in Canada grew by 29% in the last decade. This proves that trademark registration is essential for businesses looking to protect their brand and products from infringement.
In this article, we’ll provide an overview of the trademark registration procedure in Canada, including application, examination, opposition, and other processes involved. We’ll also look into the documents and official fees required during registration.
1. What can be registered as a trademark in Canada?
A trademark is a type of intellectual property that applies to words, symbols, logos, or other devices used to identify and distinguish the goods or services of one party from those of another.
You can register the following types of trademarks in Canada:
– word marks;
– color marks;
– three-dimensional marks;
– combined marks;
– certification marks;
– flavor marks;
– sound marks;
– scent marks;
– textures marks;
– moving marks;
The applicant can be any ‘person’ — an individual, partnership, trade union, association, joint venture, or corporation. There can be only one applicant.
It is important to accurately classify the goods and services associated with your trademark. This ensures that your application adheres to international standards and offers sufficient protection for your brand. This searchable database is designed to assist applicants in compiling the statements of goods or services required to file a Canadian trademark application.
You can also file a multi-class trademark application in Canada. This allows you to register a single trademark for multiple related trademark classes of goods or services, but you must pay an extra fee for each additional class. Read also what can be patented in Canada.
2. Why can you be refused to register a trademark in Canada?
Based on absolute grounds, a trademark cannot be registered if it:
– is a word that is merely the name or the surname of an individual who is living or has died within the preceding thirty years;
– is the name in any language of the goods or services in connection with which it is used or proposed to be used;
– consists of or resembles the Royal Arms, Crest or Standard; any word or symbol likely to lead to the belief that the goods or services have received, or are produced, sold or performed under, royal, vice-regal or governmental patronage, approval or authority; the arms, crest or flag adopted and used at any time by Canada or by any province or municipal corporation in Canada;
– is the emblem of the Red Cross or the expression “Red Cross” or “Geneva Cross”; the emblem of the Red Crescent;
– is a territorial or civic flag or any national, territorial or civic arms, crest or emblem, of a country of the Union;
– is a scandalous, obscene or immoral word or device;
– may falsely suggest a connection with any living individual;
– is the portrait or signature of any individual who is living or has died within the preceding thirty years;
– contains the words “United Nations” or the official seal or emblem of the United Nations;
– contains the words “Royal Canadian Mounted Police” or “R.C.M.P.” or any other combination of letters relating to the Royal Canadian Mounted Police;
– is a protected geographical indication identifying a wine or a spirit, where the trademark is to be registered in association with a wine or spirit not originating in a territory indicated by the geographical indication;
– is subject to the Olympic and Paralympic Marks Act.
According to relative grounds for refusal, a trademark cannot be registered in the following cases:
– if it may be confused with a registered trademark;
– if any sign or combination of signs has become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin, or date of production of any goods or services;
— if a denomination must, under the Plant Breeders’ Rights Act, be used to designate a plant variety.
3. Documents required for registering a trademark in Canada
Before starting your application, it’s recommended searching for trademarks via the Canadian trademarks database as well as using the Goods and Services Manual to search for acceptable goods and services terms in Canada for trademark applications.
To obtain a filing date, it is necessary to provide:
– an implicit or explicit indication that registration of a trademark is being sought;
– trademark representation or description;
– list of goods/services the trademark is associated with;
– the name and contact information of the applicant;
– the application fee.
4. The process of trademark registration in Canada
An applicant may file an application online or send a finished application by mail. If your filed application meets the filing requirements including the payment of the application fee, a filing date and an application number to your application will be assigned.
Formal and substantive examination
The registration process includes a formal examination and a substantive examination.
During the formal examination stage, the correctness of filling out the application and the availability of the necessary documents are checked. If there are deficiencies, an examiner may submit a request.
At the stage of substantive examination, an examiner thoroughly searches the trademark database to ensure that your trademark does not conflict with one already filed or registered.
The examiner will let you know if there are any objections. An applicant has a chance to respond. If answers do not satisfy the examiner, the applicant will get a letter explaining why the application has been refused. If the applicant receives a refusal, he has the right to appeal to the Federal Court of Canada.
Before a trademark is published in the Trademarks Journal, the examiner performs a second search (a pre-publication search) to ensure that no one has recently registered or applied for a trademark that would conflict with the one you want to register. If there is a conflict, the Registrar will notify you and ask for a response.
If the pre-publication search does not show any new confusing trademarks, the application will be published in the Trademarks Journal.
Any person can oppose a trademark application published in the Trademarks Journal. He or she must file either a statement of opposition or a request for more time to oppose a trademark within 2 months after the advertisement.
All decisions of the registrar may be appealed to the Federal Court within 2 months of the date the decision was dispatched. These include appeals of refusals to register a trademark, cancellation of a trademark, and decisions in opposition proceedings.
The Registrar shall register a trademark in the name of the applicant and issue a certificate of its registration if:
- An application for the registration of a trademark has not been opposed, and the time for the filing of a statement of opposition has expired;
- An application has been opposed, and the opposition has been decided in favor of the applicant.
In case of a smooth registration procedure, an average processing time of a trademark in Canada from filing to its registration is approximately 24–32 months.
Trademark registration is valid for 10 years from the registration date. Trademarks may be renewed within 6 months before the expiry of the 10-year term.
5. Costs of trademark registration in Canada in 2023
|For the first class of goods or services||$347.35|
|For each additional class of goods or services||$105.26|
|Statement of opposition||$789.43|
|For the first class of goods or services||$452.60|
|For each additional class of goods or services||$105.26|
|For the first class of goods or services||$421.02|
|For each additional class of goods or services||$131.58|
|Issuance of a certificate of registration||$210.51|
The trademark registration cost in Canada via the iPNOTE platform starts from as low as $730, which includes all government fees as well as document preparation. Find the best trademark agent in Canada on iPNOTE.
6. Bottom line
Trademark registration in Canada is a reliable way to protect the uniqueness of your business or brand and secure your commercial interests. With the right research and understanding of the process, you can get the protection you need to help your business grow and remain successful.
The iPNOTE platform features more than 700 IP law firms that cover more than 150 countries, so you can always find the right direct service provider using our flexible filtering system.
Look at our directory of trademark attorneys in Canada.
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