REGISTERED TRADEMARK IN CANADA. ALL YOU NEED TO KNOW
In Canada trademark rights are established through the use of a brand name. This simply means that the business that first and continuously uses a trademark inside Canada is the one who has primary rights over such a trademark. Nevertheless, as practice shows, it is strongly advised to apply for logo registration in Canada to receive the full protection of IP rights. Trademark registration in Canada is proof of ownership, a way of verifying the exclusive right to use the trademark in relation to specific goods and services and thus, a major method to protect a trademark name from infringement and imitation.
Places of Protection.
As the usual worldwide practice is, it will protect trademark rights only in the country of application, in Canada. That means if you provide business in association with a given logo in other countries as well, registration in each of such other countries should be considered. For example, if you also target the US market, then it is strongly recommended trademarking your business name both in the US in Canada.
Any business from outside Canada may apply for a Canadian trademark. However, if you do not (yet) have an office or place of business in Canada, a representative for services shall be appointed for the purpose of receiving correspondence from the Canadian Intellectual Property Office (CIPO).
Comprehensive trade name search.
Since the application fee is non-refundable, and the registration process might take up to 2 years, before going to the registration procedure it is wise to check the Canadian Trademarks Database providing access to 140 years of Canadian trademark data. It is needed to see if there are other similar trademarks that might be in conflict with the one you are willing to register. Save money, time and hold your nerves. The sad story is that these searches reveal only exact matches to a mark, while trademark disputes arise from similar matches. A comprehensive trade name search made by a trademark lawyer will find both exact matches and similar matches.
It has to be noted, that though there is no obligation for a logo to be in use in order to apply it for the registration, it will be necessary to make use of the trademark in the Canadian market before it is definitely registered, so to say before receiving a certificate of registration. A declaration of use will have to be presented.
So how does the process look like generally?
- Application to the CIPO should be filled online via its website along with its application fee. Note, it has to include a very detailed description of the goods or services in relation to which the trademark is used. Do not forget about choosing the right international classes. It is an extremely important moment in a potentially conflicting situation that might occur in the future.
- If everything is okay and no errors have been revealed in your application, the CIPO assigns a filing date and an application number. Then it is placed in the Canadian Trademarks Database.
- Later a trademark attorney examines the application to make sure it is registrable, and in case there are some issues – an examiner’s report is sent. Then you as the applicant have 6 months to respond to this report by addressing the mentioned issues.
- If the application is approved, the CIPO will send you a formal notice of approval, or if it is refused, you will receive a report with the explanation. In the latter case, you will be able to appeal to the Federal Court of Canada. In the first case, the trademark name will be published in the Trade-marks Journal on the CIPO’s website for the opposition, which lasts for 2 months. It gives others the opportunity to oppose this brand name. The registrar of the CIPO will consider the evidence filed by either or both parties and decide whether to refuse your trademark application.
- If the opposition is successful, the application might be completely or partially refused (note, it still can be appealed to the Federal Court of Canada). In oppose situation, it proceeds to the registration, which means the CIPO sends you a certificate of registration. From that moment your logo is officially registered.
- Every 10 years the trademark has to be renewed. Otherwise, it will lose its legal force.
For the trademark application form, if the application and the fee are submitted online through the CIPO’s website and are for the first class of goods or services to which the application relates, the fee is 336 CDN$. For the second and each subsequent international class you have to pay 102 CDN$ extra.
Duration of the registration procedure.
In the case of the smooth registration procedure, an average processing time of a trademark in Canada from filing an application form to the issuance of a certificate of registration is approximately 12-20 months. It depends on the specifics of the application. For example, it may last longer due to examiner’s reports with the issues needed to be solved, the opposition of your trademark, or even a request for time extension because of some extraordinary situations.
Validity and renewal.
Canadian trademark registration is valid for 10 years from the moment of its registration. Trademarks may be renewed within six months before the expiry of the 10-year term. Otherwise, it will be cancelled without the right to reinstate it.
To conclude, in this article we provided you with a piece of the basic information you need to know about how to register the trademark in Canada. Surely, each application has its own peculiarities which have to be considered on a case by case basis. To avoid any unpleasant situations, hire a trademark attorney to save time, money and keep your nerves. You may use the contact form below to hire experienced trademark attorneys for assistance with your overall registration process.
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