If you’ve thought about obtaining a trademark for a certain element of your Canadian company, it could prove beneficial in safeguarding vital aspects of your business or products. Although not obligatory, understanding the nature of trademarks and the involved procedures is crucial before pursuing one.
Types of Trademarks in Canada
When you think of the term “trademark,” you probably associate it with a logo representing a specific company. However, in Canada, there are various kinds of trademarks. Logos fall under the category of “ordinary marks” as trademarks. You have the option to trademark words, symbols, or a combination of both, to establish a distinct identity for your company’s products and services.
Another type of trademark is known as a “distinguishing guise,” which involves trademarking a unique way of packaging or shaping your company’s products. For example, a company selling bath oil may choose to trademark the distinctive swan-shaped container they use. The final category of trademarks is called “certification marks,” which are used to identify products or services that meet specific defined standards. An example of this would be the Woolmark design.
Is Trademark Registration Necessary?
Trademark registration is not mandatory, but it serves as a means to establish ownership and gain certain rights. While an unregistered trademark can demonstrate ownership through common law after a period of use, the associated rights are significantly limited compared to those of a registered trademark. Without registration, the rights to a trademark are restricted to the specific geographic area of use and require the owner to prove ownership in court.
In contrast, once a trademark is registered, exclusive rights are granted for its use throughout Canada for a period of 15 years, with the option to renew for subsequent 15-year periods. Additionally, registered trademark owners hold the authority to initiate legal action for infringement in either provincial or federal courts.
Trademark registration acts as undeniable evidence of ownership, thereby placing the burden of proof on any challenger in the event of a dispute. Moreover, Canadian trademark registration can facilitate the process of registering the trademark in foreign countries by enabling a claim of priority.
Given that trademarks primarily aim to establish a company’s reputation among consumers and considering the potential need to defend this reputation, relying on an unregistered trademark would provide a relatively weak defense if such a situation arises.
The Trademark Registration Procedure
To initiate the process of trademark registration, the first step is to submit an application to the Canadian Intellectual Property Office (CIPO). You have the option to conveniently file the trademark application online by visiting the CIPO’s website. Alternatively, if you prefer, there are printable forms available for agents and individuals who wish to complete the application manually and mail it in.
It is important to note that although you can file a trademark application based on various criteria such as “use or making known in Canada, foreign use and application/registration, proposed use in Canada, or any combination thereof,” in most cases, your trademark needs to be used in Canada before it becomes eligible for registration.
The fundamental cost associated with trademark registration is $330 if you choose to submit the application online. If you decide to apply through other means, the cost increases to $430. These fees reflect the basic charges set by the federal government and do not include any fees that may be applicable for engaging a trademark agent.
It is advisable to review the online Canadian Trademarks Database provided by CIPO before submitting your trademark application, as the application fee cannot be refunded. This will help determine if there are any existing trademarks that could potentially clash with the one you wish to register.
What Happens After
After conducting your own trademark search or having a trademark agent do it for you, you have submitted a trademark application. Once the Canadian Intellectual Property Office (CIPO) receives your application, it assigns a filing date and application number, marking the beginning of a five-step examination process. At this stage, you will receive an official filing acknowledgement.
Simultaneously, the CIPO takes the following steps:
- Searches the trademark records to identify any potential conflicts with the trademark you have submitted. If any conflicts are found, you will be notified.
- Reviews your trademark application to ensure it meets the requirements stated in the Trademarks Act and Regulations. If any requirements are not met, you will receive a notification outlining the necessary changes.
- Publishes the application in the Trademarks Journal, which is released every Wednesday.
- Allows a period of time for challenges to the application. Anyone can file a statement of opposition with the registrar by paying a fee of $750. In case of opposition, the CIPO registrar evaluates the evidence presented by both parties and decides whether to reject your trademark application. Both parties are informed of the decision along with the reasons behind it.
- Assuming there is no opposition to your trademark application, it is approved. You will need to pay the registration fee and submit a declaration of use (for proposed use trademarks). After completing these steps, your mark is officially registered, and you will receive a trademark registration certificate.
It’s important to note that registering your trademark with the CIPO only safeguards your rights within Canada. If you plan to sell products or services in other countries, the CIPO recommends registering your trademark in each respective country.
As you can imagine, the process of trademark registration can be lengthy. In most cases, it takes at least a year from the filing date until you receive your certificate from the government.
However, it’s crucial to remember that you don’t have to wait for your trademark to be registered before using it. You can proceed with using your trademark, but full legal protection will be granted once your application successfully completes the registration process.
Need more information? CBES is here to assist you; feel free to contact us for expert guidance.