Bereskin & Parr's Trademark Basics for Businesses series introduces entrepreneurs and business professionals to the fundamentals of trademarks in Canada and focuses on key concepts such as trademark selection, registration, use, and enforcement in the context of starting and running a successful business.
The ® symbol accompanying a registered trademark is instantly recognizable throughout the world's largest and most lucrative markets. Trademark registration has become a sign of legitimacy for brand owners and comes with numerous benefits, including exclusive rights of use in connection with the goods and services covered by the registration. This article answers some of the most common questions surrounding trademark registration in Canada.
Does my business have to apply to register a trademark in Canada?
Trademark registration is not a requirement for doing business in Canada. However, owning a registration can significantly reduce the risk of another entity challenging your right to use the mark in connection with the goods and services covered by the registration. If you have not registered your trademark, you can only obtain common law rights through use of the mark in a particular geographic area. On the other hand, a trademark registration covers all of Canada. The best protection in Canada is afforded by both trademark use and registration.
Can I file a trademark application myself?
Anyone can file a trademark application without retaining a lawyer or trademark agent. However, proceeding without assistance from a lawyer or agent is not recommended. Filing your application incorrectly or failing to prosecute the application can have serious and expensive consequences, even in the case of mistakes that seem minor. In addition, businesses may be required to work with an approved law firm under the rules of programs such as the Amazon IP Accelerator.
What are the benefits of registration?
The primary benefit of trademark registration in Canada is the exclusive right to use the registered mark in association with the goods services covered across Canada for the term of the registration (10 years). Your registration can be renewed any number of times for the same term. There are many other benefits associated with registration, including the following:
- Acquisition of a valuable business asset. A trademark registration increases the overall value of your business and can be sold or licensed to third parties.
- Lower enforcement costs. If another party begins using the same or a similar trademark and causing confusion, owning a registered trademark can reduce the costs associated with pursuing the other party.
- Deterrence against applicants for similar marks. If another party is considering using and/or applying to register a trademark similar to the mark used and registered by your business, the presence of your trademark on the Register may act as a deterrent. Further, if they decide to file an application, your registered mark forms a legal basis on which your business may be able to oppose their application.
- Enhanced domain name protection. If another party registers and uses a domain name that is likely to cause confusion with your trademark, you may be able to commence a proceeding under Canada's Dispute Resolution Policy (CDRP) or the Uniform Dispute Resolution Policy (UDRP). In these proceedings, a trademark registration serves as valuable proof of your trademark rights.
- Improved ability to combat counterfeiters. Registered trademark owners who sell their goods through online marketplaces such as Amazon can access anti-counterfeiting tools. Owning a registered trademark may also allow your business to work with the Canadian Border Services Agency (CBSA) to monitor for incoming counterfeit products at the border.
- Increased ease of doing business in Quebec. In Quebec, all printed material used in commerce must be in French, and any other language displayed on public signage must be less dominant. If your trademark is registered, you may not need to translate the mark, as "recognized trademarks" (including registered marks) are an exception to the rule.
What do I need to include in my business's trademark application?
The application must identify an individual person or a company as the applicant. It must also include a description of the goods and services associated with the mark, classified according to the Nice Classification system. This typically involves providing a list of products or services that your business currently offers and/or intends to offer in the future. In most cases, simply listing broad categories of products or services is not considered acceptable.
What does the Canadian trademark registration process involve?
In Canada, an application to register a trademark must be filed with the Canadian Intellectual Property Office (CIPO). The Office currently takes roughly 24 to 36 months to review applications.
Once your application has been reviewed by an Examiner at CIPO, the Examiner may raise objections if the goods and services are improperly specified. They may also object if they believe the mark is primarily merely a name or surname, clearly descriptive or deceptively misdescriptive of the goods and services, not inherently distinctive, confusing with another registered or prior pending trademark, or otherwise prohibited under Canadian trademark law. For a more in-depth discussion of some of these restrictions, please see the first article in the series.
Any objections raised by the Examiner will be summarized in a report sent to the applicant or its agent. The applicant may then file arguments and evidence in support of their case that the mark should be allowed registration. If the applicant is able to overcome the objections, or, if no objections were raised, the application is approved for advertisement, which is a two-month window during which third parties may formally oppose the application (e.g., based on prior rights in the mark). Assuming no oppositions are filed, or, once any oppositions have been resolved, the applied-for mark becomes registered in Canada, and a certificate of registration is issued.
When can my business use the " and ® symbols?
The third article in the series will focus on the basics of use, marking, and enforcement. Your business may use the " symbol with unregistered or pending trademarks to indicate that the word, phrase, or design is a trademark of your business. The ® symbol should not be used until the mark has become registered.
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.