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What are the phases of the trademark application process in Canada?

Your Canadian trademark application will undergo several phases at the Canadian Intellectual Property Office (CIPO) including; Advertising, Examination, Formalities, Opposition, and Allowance/Registration.     

Formalities: After your trademark application is filed with CIPO it will be assigned a filing date and application number, provided that the application is complete. CIPO will also add your application to the Canadian Trademarks Database and issue you a formal filing acknowledgement and a proof sheet that summarizes the information in your application.

Examination: Examiners will review your compliance with all application requirements. Your mark will  be inspected based on its clarity, descriptiveness, distinctiveness, deceptiveness, potential conflicts with earlier applications and any other criteria that may apply. If there are any issues with your application, the examiner will issue an Examiner’s Report. You will have a chance to respond to the examiner, and if the objections raised in the report are not overcome, your trademark application will be rejected.

Advertising: If the examiner's objections are overcome, or there are no objections,  your trademark application will be approved for advertisement in the Trademarks Journal, a weekly publication by CIPO that lists trademark applications seeking registration.  Publishing your application in the Trademarks Journal  allows members of the public an opportunity to oppose your proposed trademark during what is called the "Opposition Period.”

Opposition: During the Opposition Period third-parties may oppose your trademark application based on breach of copy, propriety rights, descriptive mark, bad faith, etc. This Opposition Period lasts for two months from the date of advertisement.

Allowance/Registration: If your trademark application is not opposed, CIPO will issue a Notice of Allowance, inviting you to pay the Registration Fee. It is not required in Canada to provide proof of use; however, if the application is Proposed Use, you have to submit a Declaration of Use. Once the Registration Fee and Declaration of Use (if applicable) have been submitted and accepted by CIPO, your trademark will be registered. CIPO will then issue an official Certificate of Registration.

Does Canada use the "Nice Classification" system?

In Canada, the use of the Nice classification system is currently voluntary. Keep in mind, however, that categorizing goods and services according to the Nice Classification will become mandatory next year when the legislative changes to the Trademarks Act come into force on June 17, 2019.

What are the "Filing Basis" in Canada?

When filing a trademark application in Canada, a “Filing Basis” must be selected. You can select from three possible options:    

1. “Use in Commerce” basis: If you are currently using your trademark in Canada, we can file your application on a “Use in Commerce” basis. In this case, you will need to provide the date of first use in Canadian commerce for each of the products and/or services included in the application. The date of first use must be before the filing date. 

2. “Proposed Use” basis: If you are not using your trademark in Canada, we can still file your application on a “Proposed Use” basis. In this case, your application will be processed normally, but once it is accepted for registration (approximately 12 months after the filing date), you must provide the date of first use in commerce in Canada for each of the products and/or services included in the application, when paying the registration fees.

3. “Foreign Registration” basis: If your trademark has been filed or registered in your country of origin, we can file your application in Canada on the basis of the “Foreign Registration” if the following conditions apply: 

  • Your trademark is not similar and cannot be confused with another trademark already registered in Canada
  • It is not a prohibited trademark or contrary to morality or public order
  • It is not without distinctive character having regard to the circumstances including its use in any country. Additional fees have to be paid for the filing of foreign certificates. 

What are the steps to obtain a trademark in Canada?

Trademark registration in Canada usually involves the following steps:    

  1. Filing of your application
  2. Examination of your application
  3. Publishing of your application in the Trademarks Journal 
  4. A waiting period to allow people to oppose your application 
  5. Allowance of your application 
  6. 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, devices, 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 the trademark registration process take in China?

The trademark registration process usually takes 14 months. When a trademark application is submitted, it takes roughly 3 months for the Chinese Trademarks Database to update. Afterwards, the trademark office reviews the completeness and validity of the submitted documents and issues an acknowledgment of the trademark filing within 2-3 months of application submission. 

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 12 to 18 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 10 to 12 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.

Who can file for the registration of a Canadian trademark?

Companies, individuals, partners, trade unions or lawful associations can apply for the registration of a trademark in Canada provided that they comply with the requirements of the Trademarks Act and Trademark Regulations.

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. 

You can access the national office by clicking this link: Canadian Intellectual Property Office

 

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 15 years. Under the amended Trademarks Act, however, new marks filed for registration after June 19, 2019, will be protected for ten 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.

Why is it important to register your trademark early in China?

China is a first-to-file country - this means whoever files first for a trademark owns it. If you are interested in doing business in China, filing your trademark early is strongly recommended. Not only would it protect your brand, it would also give you credibility when it comes to operating business in the country. 

Can I use my existing US trademark application as the basis to file a China trademark?

Since both US and China are part of the Paris Convention, if someone files a trademark application in a Paris Convention country and then files a second application in another convention country within 6 months of the date of the original filing, she can claim the first filing date as the date for her subsequent applications. For example, Amy filed a trademark application in the US on March 1, 2018. In her case, she would have until September 1, 2018 to file a trademark application for the same goods and services in China claiming the early filing date of March 1, 2018.  

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.

How do I use the TM, SM and ® symbols?

Anyone who claims rights in a mark may use the TM (Trademark) or SM (Service mark) designation to alert the public to their claim of ownership, regardless of whether they have filed an application with the Canadian Intellectual Property Office (CIPO). This claim may not be valid, but merely shows evidence that the owner believes that the mark is protectable. Use of the federal registration symbol (®) can only be used when the mark has been registered officially with CIPO. It is improper to use the ® at any time before CIPO grants registration.

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.

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.

How do I avoid adopting a trademark that may be easily confused with another trademark?

The best way to avoid conflicts with trademarks filed earlier than yours is to have a trademark search done. An experienced trademark professional like the experts at Witmart can offer preliminary advice before the search is conducted — protecting you from potential risks before they turn into conflicts.

Who can register a trademark in China?

All foreign individuals and foreign and domestic legal entities or businesses can register a trademark in China. Domestic individuals cannot register a trademark in China.

What can I register as a trademark?

Any combination of letters, words, sounds, designs and shapes that identify your goods and services from those of others can be registered.

How long is the trademark registration process in China?

On average, the registration process can take anywhere from 12 to 24 months.

How long does a trademark registration last?

The validity period of a registered trademark is 10 years, commencing from the date of registration.

How can I renew my trademark registration?

To renew a trademark registration, all formalities and forms must be completed within 12 months of the trademark’s expiration date. The validity period of each renewal is 10 years commencing from the day following the expiration of the previous 10 year validity period.

What if I don’t renew my trademark before the expiration date?

A registrant that fails to renew the trademark before the expiration date may be granted a six-month grace period before having their mark cancelled if they do not take action within that time.

Is it necessary to declare/prove use of the trademark upon renewal?

No.

How much does it cost to register a trademark in China?

The official fee for one trademark application for a single class, for no more than 10 items (goods or services) in that class, is RMB300 (about 48USD). There is an extra charge of RMB30 per each additional item.

What is a first-to-file principal?

China uses a first-to-file system for trademark registration. This means that you do not have to prove that you are using the trademark in order to get registered. Therefore there are no common-law trademarks in China and you need to file for a trademark in order to receive protection for your services or goods.

Is a People’s Republic of China agent required when filing a foreign application in China?

Yes, a PRC agent is required to file a trademark for an individual who is foreign to China.

How are goods and services classified?

Goods and services are classified using the Nice Classification system. However, China uses its own set of Chinese sub-classifications. These sub-classifications can be considered completely independent from each other so it’s important to register your trademark in all relevant classes.

Can I file my application electronically?

Yes, electronic application is available for trademark filing.

Can I apply to file a trademark internationally and not only in China?

Yes, thanks to the Madrid Protocol, you can file a trademark internationally through the WIPO (without using a PRC agent). This process takes much more time and is more prone to pitfalls and obstacles.

How will I receive correspondence from the CTMO?

Any correspondence with the trademark office will come in the form of a written letter on paper, whether the application was filed electronically or not.

Is a manual needed when identifying the type of goods or services to include in my application?

Yes. Similar to the US and Canada, each having their own Goods and Services Manual, China has their own Chinese Identification Manual that must be used when classifying and specifying goods and services.

How do I claim priority rights for my filing?

First of all, you can only claim priority rights if you already have a trademark in another country or jurisdiction that is recognized by China. You can claim priority rights if: it’s in accordance with any agreement between China and a foreign country; if it’s in accordance with an international treaty in which both countries have a part; or if it’s on the basis of mutual recognition of your right to priority filing based on various factors.

How do I file for priority rights?

To file for priority rights, you must register the same trademark that you have registered in the first country according to the same goods or services in China within six months of the original trademark’s application date.

If the CTMO raises any objections to the application, can I amend the application?

Yes. Under the Regulation of Implementation of the Trademark Law, on receipt of a notice of supplement or correction from the trademark office, any applicant, whether federal or domestic has the opportunity to amend their application.

How long do I have to correct my application in response to an objection?

You have 30 days to make the supplement or correction. If you do not respond to the objection, the Trademark Office will reject your application and notify you of the rejection in writing. Once the application has been rejected, there are no legal procedures available for you to adjust the application.

How long does the publication phase last in the Trademark Gazette?

The publication phase lasts for 3 months, and in that time third parties can file to oppose your trademark if they find issue between your mark and theirs.

What is an opposition?

During the publication phase of an application, if a third party finds issue with a published trademark, they can oppose the mark and submit evidence to have the mark cancelled.

If my application is rejected, can it be appealed?

Yes.

Where do I appeal a rejected application?

You can appeal to the Trademark Review and Adjudication Board (TRAB) and then to the People’s Court of China, if the decision made is still unsatisfactory

What is the process for appealing a rejected trademark?

After receiving a decision of rejection from the Trademark Office, you have 15 days to apply to the TRAB for a review. The board will make a decision within nine months of receiving the application and notify you in writing.

Are there any exceptions that apply to the appeal process?

The time limit may be extended by three months under special circumstances. You may also institute an action against a decision of the TRAB in the People’s Court of China within 30 days of receiving it.

What is the usual timeframe from filing to registration?

The Trademark Office is mandated to complete the examination of a trademark within nine months of the date of filing. Your mark is then published in the Trademark Gazette, provided your application complies with the relevant legal provisions. If nobody files an opposition against the published application within 3 months of the publication date, the trademark will be registered, a certificate of registration will be issued, and the registration will be published.

What is the usual timeframe for opposition proceedings?

On expiry of the publication period, it normally takes 12 months for the Trademark Office to make a decision to approve or deny the opposed registration and notify the complainant and applicant of its decision in writing.

Are there exceptions to the timeframe for opposition proceedings?

Yes, under special circumstances the time limit may be extended to 6 months.

Are opposition decisions subject to appeal?

Yes. Both parties can pursue an appeal of the decision.

How do I appeal an opposition decision?

The applicant has 15 days to apply to the TRAB Board for a review after receiving the decision.

What if the TRAB throws out my appeal?    

If the TRAB gives you an unsatisfactory ruling, you may institute an action in a people’s court within 30 days of receiving the decision. The people’s court will notify the opponent to participate in the action as a third party.

What rules and procedures govern the assignment of trademark rights to another party?

According to trademark law, for a registered trademark to be assigned to another party, both parties must sign an agreement and jointly file an application with the Trademark Office

Must an assignment be recorded to have legal effect?

Yes, it must be recorded.

Can a mark be cancelled for non-use?

Yes. According to trademark law, when the use of a registered trademark has ceased for 3 consecutive years without good reason, any entity or individual can apply to the Trademark Office for cancellation of the registered trademark.

How long does it take for the Trademark Office to make a decision on the cancellation of a mark?

Typically, the Trademark Office will make a decision within nine months of receiving the application (under special circumstances, the time limit may be extended by three months).

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