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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.

What do I need to do to satisfy the use requirement in Canada?

To satisfy the use requirement in Canada, you must prove that the trademark was used within three years after registration by confirming through a Declaration of Use. Minimal use is acceptable, and usage must be proven within Canada. 

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.

What does "USE" of a trademark mean in Canada?

A trademark is used on goods when it appears on their packaging,  labelling or on the goods themselves. A trademark which appears only in advertisements for the goods or on the goods during an isolated sale or a free distribution of the goods is not considered "used" for this purpose. A trademark is used on services when it appears in advertisements or promotional material for the services, and the services are available at that time.

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.

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