Your name and logo are the primary symbols the public uses to locate your products and services in the marketplace. This makes your name and logo the most valuable assets your business owns. The best way to claim a name and logo as your exclusive property is by registering them as trademarks.
In Canada, trademarks are registered with the Canadian Intellectual Property Office (CIPO). Unlike other business registrations in Canada, trademark registrations can take a long time to obtain. Trademark applications undergo rigorous examination for compliance with trademark laws, and due to a severe backlog in examination, the registration process takes between 2 to 3 years.
Given the lengthy wait for CIPO to approve your trademark, you should ensure that the mark is available for your use and registration before you file your application or start using the trademark. If you’re unsure if your mark is available, consult with a trademark lawyer who can provide you with a trademark search and availability opinion.
Your trademark application must describe the trademark, who will own it, and how it will be used in Canada. If the application doesn’t correctly set out all these elements, CIPO will object and your application will be delayed even further or, worse, refused all together.
The elements required in a trademark application are set out below.
This is who will own the trademark, and there can be only one applicant. If your business is incorporated, the corporation should be the owner. If you are operating your business as a sole proprietor, you should be named as the applicant. If you later incorporate your business, you can assign your trademark to the corporation.
You must also provide a main business address where the trademark owner can be reached. Failing to provide a valid mailing address could result in you missing important correspondence regarding your trademark.
Your application must include the trademark and identify the type of trademark that it is. There are many different types of trademarks, but names, logos and taglines are the most common. Name and tagline trademarks are word marks and logos are design marks.
Once your application has been filed, it’s not possible to make any significant changes to your trademark, so ensure you’ve committed to the trademark and that it is available for your use before you file your trademark application.
3. Goods and Services
Your trademark application must contain a list of the goods and/or services that you plan to sell in connection with your trademark. A good is a tangible or downloadable item that is delivered to a purchaser. Your trademark should be on the product or its packaging when it is received by the customer. A service is an activity that you do for the benefit of a purchaser. Your trademark should be displayed during the performance or the advertising of the service.
Your goods and services must be described in specific and ordinary commercial terms, and each one must be classified according to the Nice Classification System. The Nice Classification system groups goods and services into 45 classes. Claiming the correct classes is important for the purposes of paying the correct government fees and to enable the CIPO examiner to properly search and index your trademark.
If you are unsure how to describe and classify your goods and services, consult with a trademark lawyer or use our DIY trademark registration tool to prepare and file your application. It is designed to describe and classify goods and services in compliance with Canadian trademark laws.
4. Filing Fee
When your trademark application is filed, you must pay a government registration fee. The fees required depend on the number of classes of goods and services claimed in your trademark application. The fees for the first class are $336.60 and each additional class costs $102. For example, a trademark application that claims clothing, handbags and cosmetics covers 3 classes, and the total government fees due will be $540.60. These fees are non-refundable, even if your trademark application is rejected.
When you file your trademark application with CIPO, you will immediately receive an application serial number and official filing date. This application then enters the queue to be examined. The wait for examination is about 2-years. If you have conducted a comprehensive trademark search prior to filing your application, it should be safe to use your trademark as planned while you wait for your application to be examined.
In examination, a CIPO examiner will review your application to ensure that it contains all the items described above and that your trademark meets Canadian registrability criteria. If there are objections, they will be set out in an official letter and there will be a 6-month deadline for you to respond to those objections. Failure to respond within the deadline can result in the abandonment of your application.
Once the application complies with Canadian laws, it is approved and then advertised in the Trademarks Journal for any public objections. Any person who believes your mark should not be registered has 2-months during which they can file a Statement of Opposition setting out their reasons for objection. If this happens, your application will enter an opposition proceeding, which can take another 3 to 4 years to complete.
If no oppositions are filed, your application will be allowed and formally registered as a Canadian trademark. The registration is valid for 10-years and can be renewed for successive 10-year terms. This registration is the most powerful tool at your disposal to stop infringers from confusing the public by using similar trademarks. If you would like help registering your company’s trademarks, schedule a free consult with one of our trademark lawyers today.