Entcounsel is a law firm for creatives and entrepreneurs in the areas of social media law, technology, entertainment, copyright and trademarks. The following post outlines the trademark application process in Canada. You may be interested in reading What Is a Trademark.
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A trademark registration is obtained to protect a brand name, logo or slogan. A registration gives you rights across Canada.
A trademark applicant must be a “person” entitled to registration also referred to as “legal entities”. The person or legal entity may be an individual, partnership, trade union, association, joint venture or corporation. A trademark can only be filed in the name of one individual (unless it’s a lawful association such as a partnership or joint venture)
A predecessor-in-title must be named, indicating previous ownership
Do a preliminary search of existing trademarks first to make sure your trademark or brand is available. You can do this yourself or hire a professional firm to this for you. When searching, make sure you also research words that are spelled differently but sound the same.
A NUANS search of business names is also recommended. You can conduct simple internet searches and NUANS search of business names to see if others are using your proposed name or a similar name. A lawyer or agent will also search the Trademarks database.
When this article was first written, the trademark application could be filed online with a $250 government filing fee through a trademark agent or lawyer. You can do it yourself but it's highly recommended you have it done properly. You will need to pay a separate fee to the agent or lawyer. Since June 17, 2019, the government filing fee is charged for each class of goods and services, and CIPO adjusts it every year. In 2026, the online fee is $491.06 for the first class and $149.04 for each additional class. CIPO has already set slightly higher fees that apply from January 1, 2027. Check CIPO's current fee schedule before you file.
The trademark application consists of:
1) the filing fee (when this article was first written, $250 for online applications; today, a fee for each class of goods and services)
2) the application for trademark registration and if applicable,
3) a formal drawing
Since June 17, 2019, you must also group the goods and services in your application by class, using the international Nice Classification, with each group led by its class number (s. 30(3)). The number of classes sets your filing fee, so it pays to think about which classes you really need. CIPO's Goods and Services Manual lists descriptions it has already accepted.
Once your trademark application is filed, you will get a filing date and application number usually within 1 day. You may be permitted some amendments to your application after filing but not all so make sure you have it right the first time. The good news is now that you get priority over your proposed trademark on that filing date even though your trademark is pending registration.
You also get a priority date for an application filed in another country within six months of the first filing.
Since June 17, 2019, Canada is also part of the Madrid Protocol. Once you have filed in Canada, you can file one international application through CIPO, based on your Canadian application or registration, and name the other member countries where you want protection. Each country still examines the mark under its own law.
The trademark application will now be entered into the Canadian Trademarks database. You will then receive a formal filing acknowledgment and a proof sheet with information about the application.
Once we submit our application, the Trade-marks office will create a file and we will receive a filing date and an application number. The application will be entered on the Canadian Trade-mark Database and other databases maintained by external companies. n
Next, you will hear from the Trademarks Examiner who will provide an Examiner’s report. This can take approximately anywhere from 6 months to one year.
The application is reviewed by the Examiner to ensure compliance with the Trademarks Act and Regulations to determine if it can be approved for advertisement in the Trademarks journal
Wait times have changed a great deal since this article was written. CIPO publishes its current processing times and service standards on its website, so check them for a realistic timeline. Since June 17, 2019, the examiner can also object that a trademark is not distinctive, meaning it does not set your goods or services apart from those of others (s. 37(1)(d)). You may need to file evidence that it is (s. 32).
The Office of the Registrar of Trademarks will conduct a search of trademark records to locate any trademarks which may conflict with yours. The application is reviewed to ensure compliant with the Trade-marks Act and Trade-Mark Regulations to determine if it can be approved for advertisement
The Trademarks Examiner will notify you with an “Office Action” of any objections on your application such as whether your description of your wares or services are too broad, unclear or needs to be revised.
You will be notified of any objections by the examiner and you will have an opportunity to respond. If the examiner is not satisfied, then you will receive a letter that your application has been refused and providing you a list of the grounds for refusal. You can appeal to the Federal Court of Canada.
The Examiner may ask you disclaim the right to the exclusive use of certain words in your trade-mark.
The Examiner will conduct a search of the Register to see if there are any prior applications or registrations that are confusing with your application.
You can respond back to the Examiner addressing these concerns. If the Examiner is not satisfied with your response, you will receive a letter that your application has been refused along with a list of the grounds for refusal.
You may amend certain aspects of the application to address the Examiner’s concerns. You can also submit arguments to the Examiner for reasons why the application should not be amended.
The application gets prosecuted back and forth between the applicant or agent and the Examiner until the Notice of Allowance stage. This back and forth process can take several months to a year or more.
A trade-mark examiner then reviews our application to determine if the trade-mark can be approved for advertisement in the Trade-marks Journal. If it cannot be approved, we will be notified with an Examiner’s report and given the opportunity to amend certain aspects of the application so that it can be approved. We also have the opportunity to submit arguments to the Examiner if the application has been objected to. Each time we respond to an Examiner’s report, we will charge our hourly rate. We will then go back and forth prosecuting a trade-mark application to the Notice of Allowance stage. Reminder letters and filing declarations of use could also incur additional fees which are at a later stage.
If the Examiner does not move your application forward, you can appeal to the Federal Court of Canada.
The Examiner conducts a second search to make sure that there are no trademarks that are registered or applied for that could conflict with your proposed mark. This is prior to the advertisement in the Trademarks Journal.
The application is advertised and published in the Trademarks Journal to allow for any oppositions or challenges to your application
The Trademarks Journal lists every application that has been approved for advertisement in Canada for that time period
The Trademarks Journal provides your name, address, file number, filing date, the trademark, whether the application is based on use or proposed use, any disclaimers/claims and the goods and services for which the trademarks are used or proposed to be used in association with. Applications filed since June 17, 2019 do not claim use or proposed use, so that detail no longer appears for them.
Advertising allows a party to object to a trademark before its approved
An application advertised in the Trademarks Journal may be opposed by a party with valid grounds within two months of the publication date. They must file a statement of opposition or request an extension of time to oppose along with payment of a fee.
Opposition is a complex and lengthy process and we use litigation trademark counsel in the event that this arises
You can read more about opposition proceedings here.
When this article was first written, if the application was not opposed or if you were successful in an opposition proceeding, the application was allowed for registration and you received a notice. The trademark could be registered once the government fee of $200 was paid. For applications filed on or after June 17, 2019, there is no allowance notice and no registration fee. Once the two-month opposition period ends with no opposition, or an opposition is decided in your favour, the Registrar registers the trademark and issues a certificate of registration (s. 40).
When this article was first written, if your application or part of it was based on "proposed use", you needed to provide a sworn declaration stating you had commenced use of the trademark with respect to those goods/services. You could request extensions of time if you hadn't used the mark for a particular good or service. Since June 17, 2019, no declaration of use is needed before registration. Use still matters after registration. Once a registration is three years old, anyone can ask the Registrar to make you show use in Canada in the three years before the request, and an unused mark can be removed (s. 45).
You will then be issued a certificate of registration and your trademark will be entered into the Register of Trademarks.
Under the rules in place when this article was first written, a registration fee and, if you filed based on proposed use, a declaration of use indicating the mark was being used in association with the wares/services had to be provided. You would then obtain an official Registration Certificate, usually about 4 weeks later. At that time, the entire process took anywhere from 12 months to 18 months or more from the date of filing. For applications filed on or after June 17, 2019, neither the registration fee nor the declaration of use applies, and the overall timeline depends on CIPO's current processing times.
When this article was first written, a registration was valid for 15 years and renewable every 15 years after payment of a renewal fee to the government. Since June 17, 2019, new registrations last 10 years and are renewable every 10 years (s. 46). A mark registered before that date keeps its first 15-year term, and each renewal after that lasts 10 years.
Under the old rules, we had to send in the registration fee and, for proposed use, a declaration of use indicating the mark was being used in association with the wares and services. An official Registration Certificate would then be mailed out to you. This timeframe for this whole process can vary. When this article was written, if an application was filed correctly, approved without changes and not opposed, we could receive the notice of allowance within 20 months after filing (but it could also be as little as 12 months). Today there is no registration fee, declaration of use or notice of allowance for applications filed on or after June 17, 2019.
Congratulations as you now have exclusive use of your trademark for those goods and services. If you need help with your application, contact us!
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