Trademark Registration Overview for Startups

The trademark registration process can be straightforward with the right guidance on preparing a strong application. A trademark is a word, design, or combination of these elements used to identify and distinguish the goods or services of a person or organization in the marketplace.

In Canada, a registered trademark entered into the Canadian Trademarks Register grants the exclusive right to use that mark across the country for a period of 10 years, with the option to renew every 10 years. While registration is not mandatory—common law rights can establish ownership through use—having a registered trademark provides several advantages. It offers enhanced legal protection, helps prevent others from using a confusingly similar mark, and simplifies enforcement actions, allowing you to build a stronger brand presence in the marketplace.

Trademark Services

Your may typically need the following services when it comes to trademarks:

Trademark Application Preparation: Preparing your trademark application, including detailed descriptions of your mark and classification of goods or services, to strengthen your case for registration.

Communication with Trademark Examiner: Handling all communications with the Trademark Examiner, addressing any issues or questions that may arise during the registration process to ensure a smoother path to approval.

Trademark Searches: Through comprehensive trademark searches, identifing potential conflicts early, ensuring that your mark is distinctive and legally protectable.

Trademark Licensing: Drafting and negotiating trademark licensing agreements, enabling you to expand your brand’s reach by allowing others to use your mark under carefully controlled terms.

Trademark Assignments and Renewals: Managing trademark assignments, renewals, and other essential filings, helping to maintain your trademark’s exclusivity and validity throughout its lifecycle.

Trademark Enforcement and Dispute Resolution: Should your mark be infringed upon, providing enforcement services, including cease-and-desist letters, opposition filings, and representation in trademark disputes to protect your brand’s reputation and rights.

Due Diligence and IP Portfolio Audits: Conducting in-depth audits of your intellectual property portfolio to evaluate strengths and potential vulnerabilities, ensuring your trademarks are strategically aligned with your business goals.

Trademark Strategy and Brand Management: Working with you to develop a comprehensive trademark strategy, helping you expand and protect your brand as it grows, including advice on international trademark protection.

You may need support at each stage of the trademark journey, ensuring your brand is protected and positioned for long-term success.  

In addition to being fast and efficient, a law firm can assist you with preparing a trademark application online (as well as by mail).  They will provide you, with a preliminary search of the Canadian trade-marks database as well as a report along key social media platforms such as Facebook, Twitter, Google+ etc. to let you know if your mark is being used by others.

This helps you decide and assess the competitiveness of your mark.

Filing a Trademark Application Online: The Trademark Registration Process

The Canadian trademark application process can be navigated smoothly and efficiently with online filing. First, a law firm needs to evaluates your business to ensure that all relevant goods and services associated with your brand are fully covered by your application.

A trademark is a word, design, or combination used to identify and distinguish the goods or services of a person or organization in the marketplace.

Once registered in the Canadian Trademarks Register, a trademark grants exclusive rights to use the mark across Canada for 10 years, with the option for renewal every 10 years. While trademark registration is not mandatory—common law rights can protect a mark through usage—registering provides distinct advantages. It strengthens your legal rights, deters others from using similar marks, and facilitates enforcement, offering added security for your brand in the marketplace.

Advantages of a Trademark Registration

Benefits of Trademark Registration

A registered trademark is considered *prima facie* (self-evident) proof of ownership. With a trademark registration, the trademark owner does not need to prove ownership in legal disputes; instead, the burden of proof falls on any party challenging the owner's rights. This streamlined protection reinforces the owner's legal standing and reduces the need for extensive evidence in court.

Trademark applications are filed with the Canadian Intellectual Property Office (CIPO), part of Industry Canada, which administers intellectual property rights in Canada. The CIPO offers resources such as the *Trade-marks Act*, the *Trade-mark Regulations*, the *Trademarks Examination Manual*, and the *Goods and Services Manual*, which provide valuable guidance on trademark rights and registration.

A trademark is a unique identifier—a word, sound, design, or combination thereof—associated with specific goods or services that distinguishes them from those offered by others. Consumers tend to trust familiar trademarks with established reputations for quality and reliability, making trademark registration an essential tool for protecting a company’s identity and building brand loyalty.

Canada’s trademark system also allows for the registration of “certification marks” (which indicate a product or service meets a specific standard) and “distinguishing guides” that set brands apart.

Once a trademark is registered in Canada, it grants the exclusive right to use that mark across the country for 10 years, with the option to renew every 10 years. While registration is not required, it provides significant advantages over common law rights. A registered trademark offers stronger, court-recognized proof of ownership, making enforcement simpler and more efficient. In contrast, establishing common law rights requires evidence of first use, such as sales records or receipts, which can be more challenging to present in a legal setting.

Marks That Cannot Be Registered Under the Trademarks Act

Certain marks cannot be registered in Canada, as outlined in the Trademarks Act. These restrictions help ensure trademarks remain distinctive and prevent consumer confusion. Below are some types of marks that cannot be registered, along with the relevant sections of the Act:

1. Names and Surnames (Section 12(1)(a))

Marks that consist primarily of a personal name or surname are generally ineligible for registration unless they have acquired distinctiveness through substantial use with specific goods or services. This prevents individuals from monopolizing commonly used names.

2. Clearly Descriptive Marks (Section 12(1)(b))

Marks that clearly describe the qualities, characteristics, ingredients, or intended purposes of the goods or services are not registrable. For example, a term like “Fresh Bread” would be clearly descriptive if used for a bakery, as it lacks the distinctiveness needed to set a brand apart.

3. Deceptively Misdescriptive Marks (Section 12(1)(b))

Marks that misrepresent a characteristic, quality, or function of the goods or services cannot be registered. For example, “SilkTouch” for a product not made from silk could be misleading, as it inaccurately describes the nature of the product.

4. Geographical Locations of Origin (Section 12(1)(c))

Marks that indicate a geographical location commonly known to be the origin of the goods or services are generally ineligible for registration. This rule prevents exclusive use of geographic names, allowing businesses from that location to describe the true origin of their goods or services.

5. Foreign Descriptive Terms (Section 12(1)(b))

Words in other languages that directly describe a characteristic of the goods or services are usually ineligible. For example, using “Café” for a coffee shop would not be registrable as it simply describes the nature of the business in French.

6. Confusing Marks (Section 12(1)(d))

Marks that are confusingly similar to an existing registered trademarks.

Steps for a Trademark Registration

1. Filing the Trademark Application

Submit a trademark application to the Canadian Intellectual Property Office (CIPO), providing detailed information about the mark, including a description, classification of goods or services, and any necessary supporting documentation.

2. Examination Process

After filing, a Trademark Examiner reviews the application to ensure compliance with legal requirements under the Trademarks Act. This examination involves checking for distinctiveness, clarity, and compliance with registration restrictions, as well as determining if the mark may cause confusion with existing trademarks.

3. Pre-Publication Search

The Trademark Examiner conducts a search to identify any potential conflicts with existing or pending trademarks. If any issues are found, the Examiner may issue an office action, requiring the applicant to respond with clarifications, adjustments, or additional information to address these concerns.

4. Publication in the Trademarks Journal

Once the application passes examination, it is published in the Trademarks Journal, making it available for public review. This publication step allows other parties a chance to review the application and raise objections if they believe the proposed trademark would infringe on their rights.

5. Opposition Period

During the 2-month opposition period following publication, third parties can file an opposition if they believe the mark conflicts with their own rights or is otherwise ineligible. If an opposition is filed, a formal opposition proceeding begins, and both parties present arguments and evidence before a decision is made.

6. Allowance and Registration

If no opposition is filed, or if the opposition is unsuccessful, the trademark proceeds to the allowance stage. The applicant pays the required registration fee, after which the trademark is officially registered. The trademark is then added to the Trademarks Register, granting the owner exclusive rights to use the mark across Canada for 10 years, with the option to renew indefinitely.

Trademark Application Fees

Trademark Application Fees

Effective January 1, 2024, the Canadian Intellectual Property Office (CIPO) has updated its fee structure for trademark applications. The government filing fee for an online trademark application is now $458.00 CAD for the first class of goods or services, with an additional $139.00 CAD for each subsequent class.

Typical legal fees for preparing and filing a trademark application range from $750 to $2,000 CAD plus government fees, depending on the complexity of your mark. This includes drafting the application and submitting it to CIPO. Should correspondence with the Trademarks Examiner be necessary, additional legal fees can apply.

In cases where the application process is straightforward and encounters no objections, the total cost—including both government fees and legal services—may amount to a few thousand dollars but can also be substantially more depending on the complexity. However, this estimate can vary based on specific circumstances and any additional complexities that may arise during the examination process.