Trademark Registration Process

The process to obtain a trademark according to the Canadian Trademarks Act is straightforward and includes conducting comprehensive searches, preparing your application, and ensuring compliance with legal requirements to secure your brand rights.

A law firm or trademark agent conducts a preliminary search of the Canadian Trademarks Database and key social media platforms like Facebook, Twitter, Instagram, and LinkedIn to identify if similar marks are in use. This search helps you assess the availability and competitiveness of your proposed mark.

Trademark Registration

Trademark registration provides exclusive rights across Canada for ten years, with renewals available every decade. A registered trademark distinguishes goods or services, ensuring your brand is unique. Though common law offers limited protection through use, registration under the Trademarks Act provides stronger legal rights and enforcement options.

Key Sections of the Canadian Trademarks Act

• Section 16: Entitlement to register, confirming that the applicant has rights to the trademark.

• Section 12: Grounds for registrability, including distinctiveness and restrictions against descriptiveness.

• Section 38: Details the opposition process for challenging an application.

• Section 19: Establishes exclusive rights, providing prima facie evidence of ownership.

• Section 9: Outlines prohibited marks, such as official symbols or emblems.

Trademark Registration Process

The Canadian trademark registration process involves several steps:

1. Filing the Application: Submit an application with a clear description of the mark and its associated goods or services, classified by the Nice Classification system.

2. Examination: CIPO reviews the application for compliance with the Trademarks Act, particularly under Sections 12 and 16. The examiner assesses distinctiveness and potential conflicts.

3. Conflict and Pre-Publication Search: The examiner checks for existing similar marks. If issues arise, an Office Action is issued, which must be resolved to proceed.

4. Publication: The application is published in the Trademarks Journal for public inspection, allowing third parties to raise objections.

5. Opposition Period: During this 30-day period, third parties can file opposition under Section 38, claiming that the mark conflicts with their rights.

6. Allowance and Registration: If no valid opposition is raised, the trademark is allowed and entered in the Trademarks Register upon payment of the final fee.

Advantages of Trademark Registration

Registration provides prima facie evidence of ownership, as outlined in Section 19. This presumption shifts the burden of proof to anyone disputing ownership, simplifying enforcement. A registered mark offers nationwide protection and stronger legal presumptions than common law rights.

Marks That Cannot Be Registered

According to Section 12(1) of the Trademarks Act, certain marks are ineligible for registration. Here are examples to clarify:

• Names and Surnames: Generally cannot be registered unless they acquire distinctiveness. Example: "Smith Consulting" could be denied unless it is widely recognized as a unique brand.

• Clearly Descriptive Terms: Words that describe the goods or services in a generic way. Example: "Fast Cleaning Services" for a cleaning company may be refused as it is merely descriptive.

• Deceptively Misdescriptive Terms: Words that mislead consumers about the product’s nature or quality. Example: "Pure Silk" for synthetic fabrics could be refused as it misrepresents the product.

• Geographical Descriptions: Terms indicating a geographic origin of goods or services. Example: "Paris Bakery" for a bakery located outside of Paris may be refused for implying a misleading origin.

• Foreign Language Terms: Descriptive terms in another language. Example: Using "Gelato" for an ice cream shop may be denied as it describes the product in Italian.

• Confusingly Similar Marks: Marks that resemble existing registered or pending marks. Example: "Burger Queen" might be refused if it is deemed confusingly similar to "Burger King."

• Prohibited Marks: Official symbols or emblems, as per Section 9. Example: Using the Canadian flag or other official symbols cannot be registered.

Trademark Fees

Trademark registration fees can vary depending on complexity. Legal fees may range from $750 and higher, with additional government filing fees, which may increase based on the number of classes and other specifics. Complex marks covering many goods or services may incur higher costs.

Engaging a licensed trademark agent or law firm is essential to navigating this complex process effectively, helping secure and protect your brand rights. For more guidance on securing a trademark, consult a professional specializing in Canadian trademark law.

For more information, please contact a trademark agent or law firm experienced in intellectual property protection.