Trademark Registration in Canada in 2023
Are you a sole proprietor or entrepreneur intending to safeguard your brand in Canada?
One of the most important steps you can take is to register your trademark and as a business owner, you know that protecting your brand is crucial for success.
A trademark is an important tool for protecting your brand and setting your business apart from competitors. Canadian trademark registration is a lawful approach that offers the right to the proprietor to use the trademark in connection with their goods or services. Companies that are established in Canada can register their trademark with the Canadian Intellectual Property Office (CIPO). Registering your mark can provide legal protection, exclusive use, increased value, and a deterrent effect against others using a confusingly similar mark.
In this article, we’ll take a closer look at trademark registration in Canada. We will cover the benefits and the process involved in registering your trademark.
What is a trademark?
A trademark is a symbol, word, phrase, design, or combination of these elements that is used to distinguish the goods or services of one person or organization from those of others in the marketplace. A trademark can also include a distinctive sound, scent, or texture.
The purpose of a trademark is to help consumers identify and distinguish products or services from one another, and to give businesses exclusive rights to use their trademark in connection with their goods or services. A trademark can also protect the reputation and goodwill of a business, as well as prevent others from using a confusingly similar mark that could cause consumer confusion or dilution of the brand.
In Canada, trademarks are registered with the Canadian Intellectual Property Office (CIPO) and must meet certain requirements, including being distinctive and not being confusingly similar to existing trademarks.
Once a trademark is registered, the owner has exclusive rights to use the mark in connection with their goods or services and can take legal action against anyone who uses a confusingly similar mark without permission.
Types of trademarks in Canada
In Canada, several types of trademarks can be registered with the CIPO.
- Word marks: These are trademarks that consist of one or more words, letters, or numerals. Examples of word marks include Nike, Coca-Cola, and Apple.
- Design marks: These are trademarks that consist of a specific design or logo. Examples of design marks include the McDonald’s golden arches, the Pepsi globe, and the Twitter bird.
- Combined marks: These are trademarks that combine both words and design elements. Examples of combined marks include the Starbucks logo, the Amazon logo, and the FedEx logo.
- Certification marks: These are trademarks that are used to authenticate the originality of material, way of producing, grade, or additional aspects of goods or services. Examples of certification marks include the fairtrade mark and the ISO 9001 mark.
- Distinguishing guises: These are trademarks that consist of the shape of goods or their packaging or a combination of the two. Examples of distinguishing guises include the Coca-Cola bottle shape and the Toblerone chocolate bar shape.
- Sound marks: These are trademarks that consist of a specific sound or musical jingle. Examples of sound marks include the MGM lion’s roar and the intel chime.
Process of Canadian trademark registration
Trademark registration is a crucial step for businesses looking to protect their brand and intellectual property. In Canada, the process for registering a trademark involves several steps, which we’ll outline below.
Conduct a comprehensive search
Before submitting your trademark application to the Canadian Intellectual Property Office (CIPO), it’s important to conduct a comprehensive search to ensure that your desired trademark isn’t already in use by someone else.
Prepare your trademark application
Once you’ve completed a thorough search and determined that your desired trademark is available, you’ll need to prepare your trademark application.
The application should include the following:
- The name and address of the trademark owner
- Details of the product or services associated with the trademark
- A straightforward presentation of the trademark
- The filing fee
Submit your form to the CIPO
After you’ve prepared your application, you’ll need to submit it to the CIPO along with the filing fee. You can offer your form to the CIPO online or deliver it via mail.
Review and examination by the CIPO
As your form has been presented, it will be examined and inspected by the CIPO to ensure that it meets the requirements for signup.
Publication of your trademark
If your trademark application is approved, it will be published in the CIPO’s Trademarks Journal for opposition purposes.
Registration of your trademark
After your trademark is registered, you’ll receive a certificate of registration from the CIPO.
Benefits of Trademark Registration in Canada
There are several benefits to trademark registration in Canada, including:
1. Exclusive use
Trademark registration in Canada offers its proprietor the exclusive privilege to utilize the trademark with the product or services listed in the enrollment. This can help prevent others from using a confusingly similar mark and diluting the value of the brand.
2. Legal protection
Registered trademarks are protected under Canadian law, and the proprietor has the authority to take lawful action against the person who utilizes the mark without approval. This can help prevent infringement and protect the reputation of the brand.
3. Increased value
Enlisted trademarks can enrich the worth of a business, as it is regarded to be an investment that can be bought, sold, or licensed.
4. Deterrent effect
A registered trademark can deter others from using a confusingly similar mark, as they will be aware of the legal protections afforded to the registered owner.
5. Public notice
Once a brand is registered, it is published in the Canadian Intellectual Property Office’s (CIPO) database, providing public notice of the owner’s claim to the mark.
This can help prevent others from inadvertently using a confusingly similar mark.
6. Use of the ® symbol
Once a brand is enlisted, the owner can utilize the ® sign to show that it is an enlisted trademark. This can help deter others from using a confusingly similar mark.
Overall, trademark registration in Canada can help protect a business’s brand, reputation, and market share, and provide a valuable asset for the future.
Application process for Trademark registration in Canada
The application process for trademark registration in Canada is
Application: A trademark can be registered in Canada by applying to the Trade Marks Office along with a $347.35 non-refundable fee for each mark applied. You can file a registration application for a trademark that has not been used anywhere in Canada.
Initial Exam: The examiners of the Trade-marks Office then search the records of trade-marks for any potentially conflicting marks within the next four months. If there is no conflict, the examiners will make a preliminary determination about the registration of the mark, taking into account such factors as whether it is “clearly descriptive” or “deceptively misleading”. The examiners will also determine whether the goods or services are described in a way that is compliant with the rules and uses normal commercial terms. Examiners inform the applicant if they find anything negative. The applicant may have to submit a revised application.
Approval: The Trade-marks Office, once it has completed the initial determination of registrationability and the search for conflicts and made any necessary revisions to your application, will then submit the advertisement.
Advertisement: The information about trade-marks is published in the Trade-marks Journal. The trade-marks office will then accept any representations from interested parties, including filing an opposition to registration based on alleged confusion. If this happens, the opposition process can be successful and bring an end to the application process or delay it for up to 18 months.
Allowance: The Trade-marks Office will issue a notice if it does not receive any objections within two (2) months after the publication of the trademarks journal.
Registration: The applicant must pay a $200.00 fee per trademark within six (6) months of receiving the notice of acceptance to proceed to the next step. The Trade Marks Office will issue certificates of registration upon receipt of the registration fee.
Renewal of trademark registration in Canada
Following the day the trademark has been registered, it is valid for a duration of 10 years. You can submit an application for trademark renewal six months before the expiration of your trademark registration. Renewal may also be completed within six months of the termination date or within two months of receiving the formal notice, whichever comes first.
Fees for registering a trademark in Canada
If the application is filed digitally via CIPO’s official portal, then for the first category of products or services included in your Canadian trademark application, there is a filing charge of 347.35 CAD (in 2023) that must be paid. A supplementary fee of 105.26 CAD (in 2023) per class is due when submitting your application for each additional category of products or services.
If the application is filed via any other means, then for the first category of products or services included in your Canadian trademark application, there is a filing charge of 452.60 CAD (in 2023) that must be paid. A supplementary fee of 105.26 CAD (in 2023) per class is due when submitting your application for each additional category of products or services.
Trademark registration in Canada is a crucial step in protecting your brand and setting your business up for success. By going through the Canadian trademark registration process, you can ensure that your unique symbol, word, or design is legally protected, giving you exclusive rights to use it in connection with your goods or services. Trademark registration can seem like a daunting process, but it is well worth the effort. With careful planning and attention to detail, you can navigate the registration process and secure the legal protection that your brand deserves.
If you are unsure of how to proceed, it is always wise to seek the guidance of an expert from OnDemand International to support you throughout the Canadian trademark registration process.
Registering your trademark provides legal protection, exclusive use, and increased value for your business. It also helps you stop any people from utilizing your trademark without your knowledge.
Trademark registration in Canada recognizes distinct types of trademarks, including word marks, design marks, and composite marks, as well as non-traditional marks like sounds, scents, and holograms.
The Canadian trademark registration process typically takes about 12 to 18 months.
The cost of a Canada trademark register varies depending on the type of trademark and the number of classes of goods or services associated with the mark. The filing fee for a single-class application is currently $330 CAD, with additional fees for each additional class of goods or services.
If your Canada trademark register application is opposed, it means that another trademark owner or interested party believes that your trademark infringes on their existing trademark rights.
For ten years after your trademark registration, you have exclusive usage rights throughout all of Canada.