If you do your business in Canada and haven’t got your trademark registered yet, you should do it immediately! Registration process in Canada is quite convenient for an applicant, and also it is possible to register almost anything you want.
Who can apply for a trademark registration?
An application is filed by a “person”, which means any natural or duly existing legal person. There may be few applicants (it is permitted), and after the registration is complete, all of them will have equal rights on the TM.
What trademark is registerable in Canada?
In Canadian intellectual property space there are two types of trademarks: ordinary and certification ones. An ordinary trademark includes words, designs, tastes, textures, moving images, mode of packaging, holograms, sounds, scents, three-dimensional shapes, colors, or a combination of these used to distinguish the goods or services of one person or organization from those of others.
The intended use of a certification mark is a lot different. They are created to indicate conformity to certain standards (as “Woolmark”). These TMs do not mean that certain goods or services belong to your company; however, they indicate a level of quality they meet.
What are requirements to a trademark to be registered in Canada?
The main purpose of a TM is in distinction of goods or services. That is why the very first requirement to a TM is its uniqueness. A competent authority (in Canada it is Canadian Intellectual Property Office or CIPO) will not pass your TM registration if in a certain class of Nice classification (the one you want to register your TM in) there already is a similar TM.
At the same time, Canadian legislation specifies a list of markings that cannot be registered as a trademark. These are, for example, names and surnames of alive people or deceased less than 30 years; quality of the goods that characterize its direct purpose; any national symbols etc.
How much does a trademark registration in Canada costs?
Registration price is based on an obligatory governmental fee. In Canada it is 330 Canadian Dollars (approx. 250 USD) for an electronic application for registration (plus 100 Canadian Dollars (approx. 76 USD) for every additional Nice class. In case of refusal the payment been made is not returnable.
How long a trademark registration in Canada lasts?
Since 2019 your TM registration lasts ten years from the date of registration. To keep your registration valid, you need to renew it every ten years.
Can my trademark registration in Canada be cancelled?
Unfortunately, yes. This, however, happens only in two cases:
- You haven`t got your registration renewed in time;
- You do not use your TM.
That`s right, the registration could be expunged from the Register of Trademarks by the Registrar if you fail to prove use of your TM. The procedure begins when the Registrar sends a notice to the registered owner asking them to provide evidence showing that the trademark has been used in Canada during the last three years or to prove that there are special circumstances that excuse the fact that the trademark has not been used. If the owner fails to reply to the Registrar, the trademark is liable to be expunged from the Register of Trademarks.
Once the Registrar has received the requested evidence, the owner and the other party can send in written arguments and also appear at an oral hearing. After the Registrar has made a final decision to expunge, amend or maintain the registration, the owner or other party can appeal to the Federal Court of Canada.
Are there any benefits from using the trademark before filing?
Yes, there are benefits, and they are:
- Demonstration of distinction from other marks;
- More chances to avoid opposition to your trademark on the grounds of non-descriptiveness and non-distinctiveness;
- Obtainment of common law rights by virtue of reputation which can be applied to any location where the mark is known to be in use.
What information should an application contain?
The application should include the following information:
- a representation or description, or both, of the trademark;
- a statement in specific and ordinary commercial terms of the goods and services associated with the trademark;
- the statement of goods and services grouped according to the Nice Classification;
- the application fee.
What are the stages in an application process?
- Formalities (assignment of a filing date and of an application number, entering the application to the database and labelling it as “Formalized”);
- Examination (a trademark examiner will review your application and determine if the trademark can be approved for advertisement in the Trademarks Journal);
- Publication (if your application is approved, it will be published in the Trademarks Journal, so others can see it and had an opportunity to oppose);
- Opposition (in case of filing by other person of an opposition against your application, it is necessary to file a counter statement with substantiation of the groundlessness of such objections);
- Registration (a certificate of registration issuance).
How long does it take to register a trademark in Canada?
Usually the registration process takes twelve to eighteen months without an opposition.
Why an IT business needs a trademark at all?
A TM registration protects not only goods and services in common understanding. IT products, such as software, videogames, even characters also can be protected. With no registrations there is a huge risk that your competitors will register your brainchild and assign it in such way. What is more, a TM belongs to your company assets, what is important in attraction of investors or a successful sale of the company.
Do not protract with your TM registration, apply now!