What Is a Trademark? A trademark is the business name or mark that a legal entity (which can be an individual, partnership or corporation) uses for the purpose of distinguishing its goods and services from the goods and services of others.
A trademark may be a certification mark or a distinguishing guise (i.e. the shape of goods or their containers or a mode of wrapping or packaging goods) as defined by the Trademarks Act.
That was the definition when this article was first written in 2017. Since June 17, 2019, the Trademarks Act no longer uses the term "distinguishing guise". A trademark is now a sign or combination of signs that you use, or propose to use, to distinguish your goods or services from those of others, or a certification mark. A sign includes a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.
A trademark can be a combination of letters, words, sounds or designs. A trademarks sets out the organization's goods or services from others thereby protecting its brand, goodwill and reputation. It sets out the brand's image and message by conveying and communicating its brand as being distinct from anyone else. If an organization has acquired a reputation of being reliable, ethical and honest and operates consistently with its mission and mandate, then supporters will rely on the organization's branding to know that that is the entity they wish to support. A trademark represents the goodwill of a brand/organization.
When answering the questions of "What Is a Trademark", all these elements increase recognition of the organization's brand with their audiences.
A company that qualifies as a public authority can apply as an "Official Mark" under the Trademarks Act (called the Trade-marks Act until June 17, 2019) if they meet the requirements.
When this article was first written, a trademark registration gave the owner the exclusive right to use that mark across Canada for a period of fifteen years. After fifteen years, the trademark had to be renewed. Since June 17, 2019, a new registration lasts 10 years and is renewable every 10 years. A mark registered before that date keeps its first 15-year term, and each renewal after that lasts 10 years.
According to the Trademarks Act and set out in the Canadian Intellectual Property Office (CIPO) guide to trademarks, you cannot register the following marks:
Since June 17, 2019, the examiner can also refuse a mark that is not distinctive, meaning it does not set your goods or services apart from those of others.
A trademark registration application can be filed online or sent via fax or mail. You can submit a trademark application through the Canadian Intellectual Property Office. When this article was first written, the fee to file a trademark application was $250 if you filed online and $300 if you filed through mail or fax. Since June 17, 2019, the filing fee is charged for each class of goods and services in your application, and CIPO adjusts its fees every year. In 2026, the online fee is $491.06 for the first class and $149.04 for each additional class, and filing on paper costs more. CIPO has already set slightly higher fees that apply from January 1, 2027. Check CIPO's current fee schedule before you file. You can file the application online at CIPO or you can send the finished application with payment to:
The Office of the Registrar of Trademarks
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
Place du Portage I, 50 Victoria Street, Gatineau, QC, K1A 0C9.
You need to file a separate trademark for each mark. An application includes the application for registration along with the filing fee. In some cases, you can include a formal drawing if you intend to register a logo.
The Trademarks Registrar will then search the trademark records to see if there is any existing or pending trademark that could conflict with your application. If it doesn’t they will examine the application to see if it’s in accordance with legislation.
The application is then published in the Trade-marks journal to give notice to the public and allow for any opposition. If there are no challenges or if you succeed in a challenge/opposition, then your trademark will be allowed and registered. You can read about the trademark application process video here and watch a video of it here.
A trade-mark is used to distinguish the wares/services from a competitor
A word mark consists of just the words
A design mark consists of the logo and graphics (with or without text)
Examples: company name, logo, slogan, brand names of products/services, shape or product or packaging
You must use the trade-mark in order for you to rely on trade-mark rights
You can put the trade-mark on packaging at the time of the sale
For a service, you can use the trade-mark in the advertising of the services or when providing the services
When this article was first written, you could file a trade-mark application based on use or proposed use. Since June 17, 2019, an application no longer states a filing basis such as use or proposed use, and you do not have to use the mark before it is registered. Use still matters. Once a registration is three years old, anyone can ask the Registrar to make the owner show use of the mark in Canada in the three years before the request, and a mark that has not been used can be removed from the register (s. 45). And if you sue for infringement within the first three years after registration, you cannot get relief unless the mark was used in Canada during that time or special circumstances excuse the lack of use (s. 53.2(1.1)).
A trademark registration is not required as common law rights protect trade marks but these are limited to the geographical area in which the trade mark is being used. A registration will provide protection all across Canada regardless of whether it is just being used in a particular city, province or territory.
Furthermore, a registration provides a court with the presumption that the owner is the trademark rights owner requiring anyone challenging it to provide otherwise. A court will take the truth of the registration prima facie shifting the onus to the defendant to prove the registered trademark holder should not own those rights. Trade-mark registration is required in each country where the company is operating and done separately.
Since June 17, 2019, Canada is part of the Madrid Protocol. You can now file one international application through CIPO, based on your Canadian application or registration, and name the other member countries where you want protection. You still need protection in each country, and each country examines the mark under its own law, but one filing, one language and one set of fees replace many separate applications.
When this article was first written, a trademark registration provided the exclusive right to use the mark across Canada for 15 years (renewable every 15 years). Since June 17, 2019, new registrations and renewals last 10 years and are renewable every 10 years (s. 46).
The process can be time consuming.
Registration is not mandatory and trade-mark rights can be established under common law (case law)
However, protection under common law is limited to the geographical area where the brand is being used.
SHOPIFY
Trade name (company name) : SHOPIFY
Trade-mark: Shopify
Domain name: www.shopify.ca
OCAD UNIVERSITY
Trade names: OCAD, OCAD U, OCAD UNIVERSIT’y,
Trade-marks: OCAD UNIVERSITY, OCADU, OCAD, ONTARIO COLEGE OF ART & DESIGN
Domain Name: www.ocadu.ca
No trade-mark application for “Imagination Catalyst”
KLEENEX
Trade name (company name): Kimberly-Clark Worldwide, Inc.
Trade-marks: Kleenex, Soft Touch, Beyond Forests, Someone Needs One (Proposed Use)
Domain name: www.kleenex.com