Login to your account:

View Cart New User Recover password

Canada Trademark Registration 

 
Attorneys - Canada
 
Welcome:

My name is Claudette Dagenais and I'm the representative Attorney in Canada.

I'll be personally in charge of your trademark registration process.
 
Contact Us  
X


Your trademark registration will be processed in Canada through the following steps:

 
Trademark Comprehensive Study   Step 1. Trademark Comprehensive Study:
A trademark search report with attorney's analysis and opinion about registration probabilities.
Step 1 Prices
 

 
Trademark Registration Request   Step 2. Trademark Registration Request:
A trademark attorney will file and process your trademark application before the Trademark Office.
Step 2 Prices
 

Frequently Asked Questions
  • What trademark registration changes applied in Canada as of June 2019?

    As of June 17, 2019 important changes were implemented in the legal framework of trademark registration in Canada that modernized and simplified the processes and allowed access to three international treaties: Nice Agreement, Madrid Protocol and the Singapore Treaty.

    The modernization of the trademark registration process brought important benefits, most importantly:

    • The reduction of trademark registration fees, given the elimination of the final registration fees (CIPO, 2019), for applications of up to 2 classes.
    • The use of the “Nice Classification” that categorizes the products and services to be protected in 45 classes. This harmonized classification system facilitates the search and comparison of trademarks on a national and international level. The official fees to file and renew marks in Canada currently are defined according to the number of requested classes.
    • The possibility of filing a Canadian trademark registration in all member countries of the Madrid System, through one international application.
    • The simplification and standardization of the trademark registration procedures through the Singapore Treaty, that among other aspects, reduces the requirements for filing applications. For example, information regarding the use of the mark will no longer be required to obtain the registration.
    • The extension of the concept of a trademark, allowing the registration of “nontraditional” marks such as smells, flavors and textures.

     Another relevant change to consider is the reduction in the trademark registration and renewal period. With these changes that were implemented on June 17, 2019, the validity of trademarks that are registered or renewed after this date were reduced from 15 to 10 years.

     

  • How many applications should I file?

    The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in Canada.

    If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected, our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).

    In this case, proceeding with two trademark applications has the following advantages:

    1. Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
    2. You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
    3. Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.

    If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.

  • Is there a time frame for the trademark registration approval?

    The average time frame for the registration approval is 17 months, if no objections or oppositions arise.

     

  • If I register my trademark in Canada, do I have protection in other territories?

    No. Canada is the territorial limit (export from Canada included).

  • Do I need to sign a Power of Attorney?

    Yes, a scanned Power of Attorney is required.

  • Are there any benefits from using the trademark before filing?

    Yes, there are benefits. 

    • Demonstrate distinction from other marks
    • Avoid opposition to your trademark on the grounds of non-descriptiveness and non-distinctiveness
    • Obtain common law rights by virtue of reputation which can be applied to any location where the mark is known to be in use
  • Will there be problems if I do not use my trademark after registration?

    Yes. Your business competitors can attack your trademark on the basis of non-use. Non-use is a valid ground for cancellation.

  • What types of trademarks can be registered in Canada?

    You may register words, devices, names, 3-dimensional shapes, sounds, slogans, motion, holograms, and trade dress. Colours are only registrable if these are applied to specific shapes.

  • What are the phases of application after a trademark has been filed in Canada?

    The application will undergo several phases, namely Publication, Examination, Prosecution, Opposition and Registration. 

    • Publication – The particulars of the application are made accessible to the public online. Particulars include name and address of applicant, the actual mark, application date and number, priority claim, goods/services, date of first use and trademark representation.
    • Examination – Authorities will examine the applicant’s compliance to requirements. The mark will also be inspected based on its clarity, descriptiveness, distinctiveness, deceptiveness, conflict with earlier applications, and other criteria that may apply.
    • Prosecution –While the application is pending, the applicant obtains the right to use the home filing date for priority purposes.
    • Opposition – Third-parties may oppose the application based on breach of copy, propriety rights, descriptive mark, bad faith, etc.
  • What type of trademark is non-registrable?

    You cannot register:

    • any generic name
    • signs that are in conflict with Canada’s moral standards
    • signs that may threaten public order
    • name of any international organization
    • flag of states or symbols of nations and regions
    • surnames
    • non-distinguishable marks
    • geographical names
    • deceptive names that may suggest a connection with a living person
    • portrait of a person who died within the last 30 years
    • signature of a person who died within the last 30 years
    • marks associated with a variety of plant (Plant Breeders' Rights Act)
    • marks that can be mistaken as similar-looking to any mark published in the Canadian Trademarks Journal
  • Does Canada use the "Nice Classification" system?

    Yes, Canada uses it mandatorily since June 17, 2019.

  • Is there any possibility to claim priority in Canada?

    Yes. If the home country of the applicant is a World Trade Organization member and/or Paris Convention member, the home filing date would be possible to claim.

  • What do I need to do to satisfy the use requirement?

    To maintain the registration of your trademark you must use it within three years after registration. Minimal use is acceptable and usage must be done within jurisdiction. You can also justify non-use due to restrictions in importation of goods.

  • Is it legal to use my trademark even if it is not yet registered?

    Yes. It is legal to use an unregistered trademark for goods and services.


More