Is my trademark registration a guaranteed success?
There is always a degree of uncertainty in trademark registration. Often, national trademark office databases do not include the most recently filed trademarks as they are only updated so often. As a result, the trademark in question may already exist as a file in progress. In addition, some countries such as the United States adopt the common law in trademark registration. There may be cases where a trademark is not registered, but already been in use. In these cases, the first party to use the trademark will have trademark rights. These reasons may lead to failure of the trademark application. However, we share the risk with our customers, and are the only company to offer a guaranteed, 50% refund service level.
How long does the registration process take?
Under normal circumstances, the trademark office will issue an acknowledgment of the trademark filing within one or two weeks. Our express service can guarantee protection of your mark by expediting the application to get a filing number within 3 business days. After that, the final trademark registration certificate will usually be issued in 18-24 months.
Who can apply for trademarks in Canada?
Any individual or company can apply for trademarks in Canada, regardless of their country of origin or operation.
How to register your trademark in Canada?
In Canada, registration of a trademark consists of having the trademark entered on the Trademarks Register of the Trademarks Office of the Canadian Intellectual Property Office of Industry Canada ("CIPO"). The entire process takes approximately twelve (12) to eighteen (18) months, unless there are opposition proceedings, in which case the process can be much longer.
Do I need a Lawyer/Attorney to file a trademark?
While it is possible to file a trademark application without a lawyer/attorney, it is generally advisable to retain some kind of professional assistance to help you with clearing the mark, composing and filing the application (especially the list of goods and services), corresponding with the trademark office after filing if your application must be changed to make it registrable, and representing you in any opposition or other proceedings that may arise. Witmart does not practice law, but it can help you with the clearing and application stages.
Can you trademark your name?
In Canada currently, famous names are only registrable as trademarks if the applicant can establish by way of evidence that the applied-for name has “acquired distinctiveness” or “is not without distinctive character” in Canada and so long as the other statutory requirements are met. In general, the evidence needed by such applicants decreases as the level of fame of the individual increases. Unfortunately, recent amendments to Canada’s Trade-marks Act will make it even more difficult to secure registration for a famous name used as a trademark in Canada.
What are the classes of trademark in Canada?
Canada adopts Nice Classification which is an internationally-used system of classifying goods and services for trademark applications. More about Nice Classification can be found in a previously-posted FAQ: What is Nice Classification? What are the classes in the Nice Classification?
Does Canada use the Nice classification system?
In Canada, the use of the Nice classification system is currently mandatory.
What are the steps to obtain a trademark in Canada?
Trademark registration in Canada usually involves the following steps:
Filing of your application
Examination of your application
Publishing of your application in the Trademarks Journal
A waiting period to allow people to oppose your application
Registration of your trademark
What types of trademarks can and cannot be registered in Canada?
You may register anything that does not disobey the Trademarks Act such as words, designs, names, three-dimensional shapes, sounds, slogans, motion, and holograms. You cannot, however, register the following types of marks:
Names and surnames;
Clearly descriptive marks;
Deceptively undescriptive marks;
Words that represent a geographical location commonly known to be the place of origin of such goods or services;
Words in other languages;
Words or designs that could be confused with a registered trademark or pending trademark; and
Words or designs that look very similar to a prohibited mark
How long does it take for me to get a Canadian registration once I file my trademark application?
The entire Canadian trademark application process, from filing to registration, generally takes 18 to 21 months if there are no objections from a CIPO examiner or third-party oppositions to the application.
How long will it take for a Canadian trademark examiner to review my trademark application?
We find it can take anywhere from 15 to 18 months before an application is reviewed by an examiner at the Canadian Intellectual Property Office.
Is it possible to register a trademark outside of Canada?
Registering your trademark with the Registrar protects your rights in Canada only. If you wish to sell goods or services in other countries, you should think about getting trademark registration(s) there as well. For more information, contact a Witmart Trademark Consultant.
Can I register my trademark in individual Canadian provinces?
You cannot register a trademark in individual provinces in Canada. All trademark registrations are granted nationally by the Canadian Intellectual Property Office (CIPO). Registration of a trademark in Canada gives you nation-wide protection of your mark no matter where you live in Canada.
Is there a way to claim priority filing in Canada?
Yes, if the home country of the applicant is a World Trade Organization member and/or a Paris Convention member, that applicant can file under their home filing date to earn priority consideration.
Will there be problems if I do not use my Canadian trademark after registration?
Yes, if you do not use your Canadian trademark after registration, your business competitors can attack your trademark on the basis of non-use. Non-use is valid grounds for cancellation.
Is it legal to use my trademark even if it is not yet registered in Canada?
Yes, it is legal to use an unregistered trademark for goods and services. You can use the ™ mark for any non-registered trademark. That said, you are not able to use the ® mark until you have officially registered your mark in Canada.
Does having a registered trademark in Canada give me any rights?
Registering your trademark in Canada proves validity and ownership, making it harder for your competitors to challenge your mark. That said, under the “First to Use” jurisdiction, registration is not required to obtain rights to a trademark as long as you can prove that you are the first to use the mark.
Can I file for a word and a design together on the same trademark application in Canada?
If you plan to always use a combination of word(s) and design together in association with your goods and services, you can file one application showing the trademark as the combination of word(s) and design in black and white.
If you plan to use the word(s) separately from the design, however, you may wish to file two separate trademark applications — one for the word(s) and one for the design.
What is the official Trademark Office for Canada?
The Canadian Intellectual Property Office (CIPO) is a part of Innovation, Science and Economic Development Canada. CIPO is a Special Operating Agency and is responsible for the administration and processing of the greater part of intellectual property (IP) in Canada. CIPO's areas of activity include trademarks, patents, copyright, industrial designs and integrated circuit topographies.
What is the difference between a registered and an unregistered trademark?
When you register your trademark, you get the sole right to use the mark across Canada for 10 years. You can renew your trademark every ten years after that.
Technically, a registered trademark is one that has been entered in the Register of Trademarks, as managed by the Registrar. Registration is direct evidence that you own the trademark. In Canada, should a trademark dispute occur, the registered owner does not have to prove they own the trademark — that duty falls to the challenger.
Trademark registration is not required for ownership. By using a trademark for a certain length of time, you can come to own it according to common law. If you use an unregistered trademark and end up in a dispute, however, you could be looking at a long, expensive legal battle over who has the right to use said mark. Even if you do register your trademark, if you fail to use the mark over a long period of time, you may be taken off the Register of Trademarks, making it more difficult to prove legal trademark ownership.
Can you transfer a registered Canadian trademark to someone else?
A trademark is a form of property. You can sell, bequeath or transfer your rights to someone else through an assignment. To avoid ownership disagreements, you should formally tell the CIPO Registrar about changes in ownership.
Can I file a Canadian trademark application if I live outside Canada?
Yes, if you apply to register a trademark in Canada but are living outside the country, you must appoint someone (a “representative for service”) in Canada to whom the Registrar can send correspondence.
Your representative for service cannot act on your behalf for any business with our office — only your trademark agent can do that. Your representative for service’s only role is to receive correspondence from our office.
When should I register my trademark in Canada?
It is best to file your application as soon as you affiliate your brand or identity with your unique “Trademark”— the word, logo, phrase or other unique element or combination thereof that you wish to register. As you begin the registration process, you might discover that someone is already using a similar or identical mark. It’s better to find out about potential conflicts early rather than several years after establishing your brand identity around a mark already in use elsewhere.
What should I do if someone else is trying to register something similar to my trademark in Canada?
You or anyone else can look through the Trademarks Journal, a public document published by the government of Canada, to monitor new registration applications. If a potential trademark from another applicant raises concern, you should hire a Trademark Agent or Lawyer and file a formal Statement of Opposition that includes all the grounds for opposing a potential applicant.
Can you trademark names and surnames in Canada?
A trademark cannot be registered in Canada if it is nothing more than a name or surname (for example, John Doe or Jane Smith, Wong, Cohen, etc.).
There are exceptions to this rule. For example, if you can prove that your goods or services have become publicly well known under a particular name or surname and that the word has developed a second meaning associated with your brand in the public mind, you may still be able to register your mark. Another exception might include a name or surname that has a separate meaning outside the name or surname itself; that is, the name is also the word or name of a community, city, town, river, castle, etc. In that case, you could register your last name to as a business trademark — as long as there were no other reasons you prohibiting that usage.
I just got a notice of opposition. What is an Opposition?
Any person with a reasonable argument for doing so can oppose a trademark application advertised in the Trademarks Journal. The person must make the opposition within two months of the publication date by either filing a statement of opposition or asking for more time to oppose. The proper fee must be sent with the statement of opposition or request for more time. The Registrar will not allow any opposition that may be considered frivolous.
If your application is opposed and you do not already have an agent, it is best to hire one at this point. The same is true if you wish to oppose someone else's application. Opposition is a complex and often long process. Opposition proceedings are adversarial in nature and similar to court proceedings. Both parties may file evidence and counter-arguments, cross-examine the evidence of the other party, and appear at an oral hearing. After a final decision is made, it may be appealed to the Federal Court of Canada.
Can I use an English trademark in Quebec?
The Quebec Charter of the French Language contains provisions that are intended to protect the French language within Quebec. The regulations under the Charter provide a specific exemption for “a recognized Trademark" within the meaning of the Trademarks Act unless a French version has been registered. “Thus, a Trademark registered with CIPO is exempt from the Charter. It is not clear whether an unregistered trademark would also be covered. Your safest course of action is to register the trademark if you intend to use it in English in Quebec.
Are all Canadian Lawyers able to provide legal services in relation to trademarks?
No, the lawyer must also be a registered trademark agent.
What is a trademark agent in Canada?
A registered trademark agent is the only professional permitted to handle an application whether searching, preparing, filing, or responding to issues raised by the Canadian Intellectual Property Office.
Do I have to be selling the products associated with my trademark to file an application?
No. An applicant can file on an intend to use basis.
What are your fees to apply for a registered trademark in Canada?
For online application, $330 for the first Nice class of goods or services, plus $100 for each additional class. The application fees will be higher if you submitted the application via mail. It will be $430 for the first Nice class of goods or services, plus $100 for each additional class.
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