Before using a trademark in Canada or applying to register a trademark, it is highly recommended to instruct a trademark agent to conduct an availability search on the Canadian Register and the Canadian market. Indeed, the Canadian Intellectual Property Office (CIPO) may block the registration of an application based on confusion with a prior entry on the Register, and there is a risk of legal proceedings from a third party having prior rights to a confusingly similar trademark.
If the decision is taken to seek registration, the applicant must provide the following to file an application:
- The name and address of the applicant (owner): Any person from Canada or abroad may apply to register a trademark in Canada. An application can be filed by a corporation, whether a private organization or a public authority. Individuals may also file applications. In the latter case, the name and surname of the applicant must be provided. The individual's trading style may also be incorporated in the application, for example, “Joe Smith trading as Smith's Deli.” The application must include a valid postal address.
- A description of the trademark: If the applied-for trademark is a word, the applicant simply provides the spelling of the trademark. If the applied-for trademark is a design, such as a logo or a combination of words and design elements, the applicant must provide a visual representation of the trademark. Colour can be claimed in a design mark, as long as a clear description of the colour is provided in the application. Other non-traditional trademarks may be applied for, such as a three-dimensional shape, hologram, moving image, mode of packaging goods, sound, scent, taste or texture. In such cases, CIPO will request further information.
- A statement of the goods and services associated with which the registrant uses or proposes to use the trademark must be provided in the application. The description must be made in ordinary commercial terms and in a manner that identifies each specific good or service. For example, “clothing” is an ordinary commercial term but is not deemed specific enough by CIPO. “Baby clothing,” which provides functional details of the good, would be deemed sufficiently specific. Finally, the goods and services must be classified in accordance with the Nice international classification system. There are 45 pre-established classes to choose from, and each good and service in the description must be classified in one of the classes. For example, “baby clothing” would be classified in Class 25, “Clothing, footwear, headwear.”
- Payment of the filing fees: The applicant has to pay CIPO's filing fee, which at present is $336.50, plus an extra fee per class of goods and services. The first class applied for is free, and each additional class incurs a fee of $102.00.
Once an application is filed, the next step is for the Examination Section of CIPO to review the application details. The administrative delay before an application is examined is currently over two years from the filing date. Upon its review of the application, CIPO may send a report requesting additional information. For example, the Examination Section could request changes to the description of the products and services or could request to reclassify certain goods or services. The Examination Section could also object to the registration altogether if it concludes that a third party's prior application or prior registration could be confused with the applied-for trademark. Objections may also be raised based on the descriptive character of the trademark or its lack of distinctiveness. If an objection is received, the applicant will have the opportunity to provide arguments to try to overcome the objection.
After being approved by CIPO, the application moves to the publication stage. Once the application is published in the Trademarks Journal, any interested party has two months to file an opposition to the registration of the application. If no opposition is filed within the deadline, or if the opposition is ruled in favour of the applicant or otherwise abandoned, the application will move to registration and CIPO will issue a certificate of registration.
As trademark agents, we at Langlois Lawyers can assist the applicant by managing the entire registration process and all correspondence with CIPO.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.