Do I need a trademark?
If you are offering goods and/or services to the public under a particular brand or logo then you should consider trademark protection.
What is a trademark?
A trademark can be a word, sound or design that distinguishes one company's goods or services from those of others in the marketplace.
How do you obtain a trademark?
To secure a trademark, the process is relatively simple:
- A search is conducted to ensure that there aren't any similar marks either registered or in common law use;
- An application is then filed with the Canadian Intellectual Property Office (“CIPO”) and then examined to ensure that it complies with the Trade-marks Act;
- After the examination is completed, the application will either receive an Approval Notice or an Office Action;
- If an Approval Notice is issued, the application will then be published for opposition in the Trademarks Journal. Interested parties will then have 2 months from the date of publication for file a Notice of Opposition;
- If an Office Action is issued, you will need to respond within 6 months. Office Actions can be issued for relatively minor matters, such as clarification of the description the goods or services. They can also be issued for more serious matters, such as objection based on an allegation of confusion with an existing registration;
- If the application makes it through the publication stage without an opposition being filed, it will then proceed to registration.
Until 2019, you could not get a trademark registered in Canada unless you certified that you had used the trademark in association with specific goods and/or services. Since June, 2019, you have been able to get a trademark registered without the necessity of certifying that you have used that mark. However, in order to maintain your trademark rights after registration, you will need to use your mark in association with the goods and/or services listed in your registration, otherwise your registration could be vulnerable to dismissal.
Originally Published October 2021
About Mackrell International – Canada - Lindsay Kenney LLP is a full service business law firm with offices in Vancouver and Langley, BC and a member of Mackrell International. Mackrell International – Canada is comprised of four independent law firms in Alberta, British Columbia, Ontario and Quebec. Each firm is regionally based and well-connected in our communities, an advantage shared with our clients. With close relations amongst our Canadian member firms, we are committed to working with clients who have legal needs in multiple jurisdictions within Canada.
This article is intended to be an overview and is for informational purposes only.