Answer ... The Office of the Registrar of Trademarks at the Canadian Intellectual Property Office (CIPO) controls the trademark registration process.

Answer ... The 2024 fees for an application for registration of a trademark – assuming that the application and the fee are submitted online through the CIPO website – is:

• C$458 for the first class of goods or services to which the application relates; and
• C$139 for each additional class of goods or services to which the application relates as of the filing date.

If the application and the fee are submitted through any other means, the fees for an application are:

• C$597 for the first class of goods or services to which the application relates; and
• C$139 for each additional class of goods or services.

The registration of a trademark in respect of an application with a filing date before 17 June 2019 has a registration fee of C$277. Official fees are adjusted annually pursuant to the Service Fees Act (S.C. 2017, c. 20, s. 451).

Answer ... Yes, the Office of the Registrar of Trademarks uses the Nice Classification scheme. Any trademark applications registered prior to the adoption of the Nice Classification scheme by the Office of the Registrar of Trademarks must have grouped goods and services according to the Nice Classification on renewal.

Answer ... ‘Class-wide’ applications are not allowed. Applicants:

• must identify the specific goods or services for which the mark will be used; and
• may use CIPO’s Goods and Services Manual for guidance (although this is not comprehensive).

Answer ... Yes, an applicant must have a bona fide intention to use the trademark for the goods or services identified in the application. A statement of use is not required to register a trademark application; however, if a trademark is not used for three consecutive years, the trademark risks being expunged through a Section 45 non-use proceeding initiated by a third party.

Answer ... Yes, the Office of the Registrar of Trademarks will conduct a search of the Trademarks Register for prior-filed pending applications or registrations which are identical or confusingly similar to the trademark application under review.

Answer ... The Office of the Registrar of Trademarks also examines trademark applications to ensure that they are not:

• whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of:
• • the goods or services in association with which they are used or proposed to be used; or
  • the conditions of or the persons employed in their production or of their place of origin;
• a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding 30 years;
• lacking distinctiveness;
• a trademark which consists of, or so nearly resembles as to be likely to be mistaken for, a prohibited mark as defined in Section 9(1) of the Trademarks Act;
• denominations that are used to designate a plant variety as per Section 10.1 of the act; or
• protected geographical indications for wines, spirits, agricultural products or food.

Additionally, the Office of the Registrar of Trademarks examines trademark applications to ensure that the goods and/or services listed in the trademark are in ordinary commercial terms, and that the statement of goods or services is described in a manner that identifies a specific good or service.

Answer ... See question 3.7.

Answer ... No, the Office of the Registrar of Trademarks does not have a supplemental register on which descriptive marks may be registered. If a trademark application is refused on the grounds that the mark is descriptive or not inherently distinctive, the applicant may submit evidence of acquired distinctiveness as of the filing date of the application to overcome the refusal.

Answer ... A third party may submit a written communication to the Office of the Registrar of Trademarks on pending applications notifying the Registrar of their prior trademark rights. Notifications of third-party rights allow third parties to bring to the attention of the registrar information that may be relevant relating to the registrability of a pending trademark application; however, it does not create an inter partes proceeding between the applicant and the third party. Notifications of third-party rights are limited to the following grounds:

• The trademark is confusing with a registered trademark under Section 12(1)(d) of the Trademarks Act;
• The applicant is not the person entitled to registration of the trademark in view of Section 37(1)(c) of the act; or
• A registered trademark is being used in the application to describe goods or services

Answer ... A statement of use is not required to obtain a trademark registration. However, if a trademark is not used for three consecutive years, it risks being expunged through a Section 45 non-use proceeding initiated by a third party.

Answer ... There are three potential timelines for trademark applications to reach examination in Canada: (a) accelerated, regular, and expedited. The Trademarks Office publishes and updates Client Service Standards which, as of the date of publication of this article, indicate the following timeframes:

• Accelerated timeline: A trademark application which uses the Pre-approved List of Goods and Services typically takes 18 months to reach examination.
• Regular timeline: A trademark application which does not use the Pre-approved List of Goods and Services currently takes 28 months to reach examination.
• Expedited timeline: A request for expedited examination may be made in relation to a trademark application if any of the following criteria are met:
• • A court action is expected or underway in Canada with respect to the applicant’s trademark in association with the goods or services listed in the application;
  • The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant’s trademark in association with the goods or services listed in the application;
  • The applicant requires registration of its trademark in order to protect its IP rights from being severely disadvantaged on online marketplaces; or
  • The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign IP office. In such cases the request will need to be attached to the affidavit or statutory declaration.
• A trademark application which is cleared for expedited examination typically reaches examination within two to four months of receiving confirmation from CIPO that the trademark application has been accelerated (see the CIPO practice notice entitled “Requests for Expedited Examination” for further information).

Answer ... Assuming that no examination reports are issued, the timeline from filing an application to publication is generally similar to the regular, accelerated and expedited timeframes set out in question 3.12.

Where a response to an examination report is submitted, and assuming that such response overcomes the refusals listed, a regular trademark application (not accelerated or expedited) currently takes over 42 to 48 months to reach publication.