Steps to Register a Trademark with the Canadian Intellectual Property Office - CIPO

Introduction

Celebrated Canadian trademarks, such as the enduring maple leaf gracing Canada's flag, the iconic imagery of Canada Goose clothing, or Tim Horton's coffeehouses and restaurants stand as emblematic symbols of the nation's culture and commerce. These distinctive signs uniquely delineate a company's goods or services within a diverse market. They encompass a wide spectrum, ranging from names and letters to numbers and colors, constituting an integral part of intellectual property. They bestow exclusive rights upon their owners, authorizing them to employ these symbols for product or service identification and even granting licenses to others in exchange for a fee.

In this fast-paced age of digital technology and innovation, trademarks have risen to the forefront as strategic assets in the corporate landscape, impacting innovation, economic performance, and firm size. In an era where product differentiation and customer loyalty are paramount, trademarks have emerged as silent champions, serving as symbols of quality, reputation, and visibility. They quietly but profoundly influence businesses by simplifying consumer searches and reinforcing brand identity. Successful trademarks not only signify value to consumers but also translate into augmented profit margins for the enterprises they represent.

In this comprehensive guide, we will walk you, step by step, through the trademark application process in Canada, while addressing some of the unique advantages the country offers, as well as the requirements for locals and foreigners.

Trademark Registration Process in Canada: an Overview

Canada boasts a vibrant landscape of top trademarks spanning various industries, exemplifying brand value and popularity. Iconic names such as TD Bank, RBC, and Bell Canada have earned their place through unwavering quality and customer commitment. At the forefront of technology, brands including Shopify, Hootsuite, and Clearco have set global benchmarks in e-commerce, social media management, and fintech solutions, celebrated for their innovation and success and influential not only in Canada but around the world.

Business-friendly environment

While the above names represent only a fraction of the valued trademarks thriving in Canada's diverse market, they serve as testament to Canada's business-conducive environment, making it an attractive destination for both domestic and foreign investors and entrepreneurs seeking to establish or expand their enterprises. This reputation is underscored by its consistent acclaim as a business-friendly destination by the World Bank, demonstrated by the nation's stability and coupled with its advantageous location and trade agreements. Its strategic geographical position grants businesses convenient access to the vast U.S. market, while trade agreements such as the United States-Mexico-Canada Agreement (USMCA) extend additional advantages to companies operating within Canada. In addition, its diverse and multilingual workforce fosters innovation, creativity, and a global approach to business.

Legal protection

While registering a trademark is not obligatory in Canada, it does provide a wealth of benefits and legal protections that can safeguard your brand's uniqueness and reputation. The primary function of a trademark is to ensure consumer protection by preventing confusion about the origin or quality of products. Without registration, relying solely on common law rights, which are established through prolonged use, can lead to costly and protracted legal entanglements over ownership in case of a dispute. Furthermore, an unregistered trademark is only enforceable in geographical areas where the trademark has gained a sufficient reputation.

Trademark registration in Canada grants the owner the exclusive right to use the registered mark for the specified goods and services throughout the entire country for a period of 10 years, with the option of renewing the registration every decade, pending payment of a renewal fee within a specified period. This means that once your trademark is registered, you have a clear legal basis for preventing others from using a similar mark for similar products or services. This enhanced legal protection ensures that you have various avenues for enforcing your rights and protecting your brand from potential threats, such as appealing to the Federal Court in the event of infringement. The Canadian Trademarks Office actively checks for prior filed or registered marks when evaluating new trademark applications. If a similar mark is found, it may be cited against the new applicant, discouraging them from proceeding with the registration. This not only protects your brand but also reduces the likelihood of consumer confusion in the marketplace. The Canadian Trademark Register is a public database. This transparency is advantageous for brand owners, as potential applicants for similar marks are likely to conduct availability searches before filing their applications, dissuading them from adopting a confusingly similar mark.

Exemption from the French Language Charter in Quebec

In the province of Quebec, special language requirements are protected by the provincial Charter of the French Language, meaning that the use of the French language may be mandatory for certain aspects of business operations. However, owning a registered trademark provides an exception to these requirements. This means that trademark owners have an easier time branding their products and services in Quebec, allowing businesses to maintain their unique brand identity in English without running afoul of language regulations.

Priority rights regarding trademark applications in different jurisdictions

A Canadian trademark application allows the owner to seek trademark protection in other Paris Union countries, such as the United States, the UK, and China, within 6 months. This new application takes priority over others filed in that timeframe, offering a competitive advantage for securing brand identity internationally.

Requirements for Locals

A trademark applicant must be a "legal entity" or "person", which may include both individuals and legal entities such as partnerships, trade unions, associations, joint ventures, or corporations.

Under Canadian trademark law, individuals seeking trademark registration in Canada must possess either a Canadian address or enlist the support of a Canadian trademark agent. Opting for the services of an agent is highly advisable as it guarantees that your application complies with Canadian standards and greatly streamlines the entire process. Enlisting the expertise of an agent is instrumental in guaranteeing your application's compliance with Canadian regulations, promoting a smoother process. While not all trademark agents are practicing lawyers, it's advisable to opt for an agent with substantial experience in both trademark registration and enforcement in Canada. Beyond legal compliance, partnering with an accomplished trademark attorney yields various additional advantages. It's important to note that trademark agents have a distinct role from trademark lawyers who primarily deal with legal aspects like court representation and disputes.

Requirements for Foreigners

Foreign applicants can also file their trademark application electronically at the Canadian Intellectual Property Office (CIPO). But they should keep the following in mind:

Foreign applicants are welcome to submit a Canadian trademark application, making the process more accessible to international businesses; but as a non-resident, you're required to designate a representative in Canada who can receive official communications from the Trademark Office. Please note that the role of a representative for service differs from that of a registered trademark agent. While a trademark agent can represent you, a representative for service primarily manages communication within Canada, serving as an intermediary between CIPO (Canadian Intellectual Property Office) and you. A registered trademark agent in Canada can also assume the role of your representative for service.
Conventional Priority: Foreign applicants can claim conventional priority if they have filed a trademark application in any country of the Union other than Canada within the preceding six months.
Canada became a member of the Madrid Protocol on June 17, 2019, allowing trademark owners to protect their trademarks through a single application in almost a hundred signatory countries. You should note, however, that it does not ensure automatic approval of your trademark in Canada. The Canadian Intellectual Property Office (CIPO) remains responsible for deciding whether to approve or reject a trademark application.

Foreign applicants are advised to seek the help of trademark representative to operate on your behalf. For further information, please see the section below on the Benefits of Hiring a Local Representative or Lawyer.

STEP 1

Conduct a Comprehensive Search

To safeguard your trademark, it's essential to conduct a trademark search. Begin by using the Canadian Trademarks Database provided by the Canadian Intellectual Property Office (CIPO). This database is updated weekly and serves as a dependable resource for registered trademarks in Canada. The database includes descriptions of goods and services and their associated classes, following the Nice and Vienna classification systems: the former for classifying goods and services in trademark applications, and the latter for figurative elements or non-standard characters.

At Nominus.com, we provide a search tool that allows you to perform searches based on trademark names (similarities and equivalents), class, and status (active or non-active).

To safeguard your time and resources, we also provide a Comprehensive Trademark Study, a valuable resource for identifying and potential pitfalls before commencing the registration process. Under the guidance of our seasoned trademark attorneys, you'll receive a professional assessment of your trademark's prospects for successful registration, instilling confidence in your application. For comprehensive searches, we always strongly advise enlisting the services of a trademark representative. Please see the section below on the benefits.

STEP 2

Filling out the Trademark Application Form

To secure a Canadian trademark registration, once you've conducted a thorough viability search, you must submit an application to the Canadian Intellectual Property Office (CIPO). CIPO adheres to the Privacy Act, ensuring that they only collect information for trademark applications.

Before you begin, make sure to have the following information to hand:

Name address of Applicant, or business address in Canada if applicable.
A representation or description, or both, of the trademark.
A clear statement in specific and ordinary commercial terms regarding the goods and services associated with the trademark.
List the goods or services associated with the trademark categorized according to the Nice Classification.
Provide details including the date of first use if the applicant has started using the trademark or plans to use it in the future.
If the trademark is registered elsewhere, provide any information on foreign trademark registrations online.
The requisite government filing fee. This fee comprises a base fee for one class of goods or services and an additional fee for each extra class of goods or services.
Any additional requirements specific to the type of trademark being sought for registration.

How to access CIPO online services

Starting on March 28, 2022, CIPO introduced a revised login procedure for their online services, encompassing three key changes:

1) Users will have the option to log in using either GCKey or Sign-In Partner (Verified.Me) credentials. The GCKey is an official electronic credential that allows clients password to connect to all federal government programs and services using a single username and password combination. If it’s your first time, you can create a GCKey. Sign-In Partner, on the other hand, offers you a convenient login option using Canadian online banking credentials.

2) All CIPO online services have transferred to the new My Canada Business Account platform, formerly My ISED Account, ensuring access to your intellectual property portfolio and account history.

3) To bolster security and safeguard personal and business data, a two-step verification process has been implemented as an added protective measure. Please follow the instructions.

Accessing the trademark form

Before being able to access the Trademark Application form, you will need to update your My Business Account User details, including your name and address.

Once completed, you will have access to several services. Click on "My Services", then "Trademark Registration".

The form is very straightforward and make take can take between 10 and 15 minutes to complete and consists of 7 main sections including payment.

Section 1: Applicant Details

Complete the Applicant Details, including name and address or a principal office address, which must be in Canada, if the applicant is a corporation. Click on Create a New Applicant if this is your first time.

Non-Canadian applicants have the option to provide a Canadian correspondence address, which aids in receiving communications from the Canadian Intellectual Property Office.

Section 2: Address for Service in Canada

The Address for Service section in Canada's trademark application form typically requests the address where all official correspondence related to the trademark application will be sent. This address is used for communication between the applicant and CIPO regarding the trademark application. Non-Canadian applicants have the option to provide a Canadian correspondence address. Once completed,
click on Next to continue.

Section 3: Trademark Details

Here you will be asked to select the trademark type (words, design, color etc.), name the trademark and respond to a series of short yes or no questions about your trademark request. Once complete, click on Next. Please note: In accordance with CIPO's guidelines, it's necessary to submit individual applications for wordmarks and design marks (logos); however, a single application can encompass various goods or services associated with a particular trademark. Your application must include a clear representation or description of your trademark. Color trademarks should be submitted in color with a description of the colors and their placement. Sound and moving image trademarks require electronic representations and descriptions. Remember that changes to your trademark post-registration, including alterations to color, are not allowed if you want to maintain your trademark registration.

Section 4: Good or Services Details

This section allows you to group goods or services associated with your trademark according to the 12th Edition Nice Classification classes. Click on "Pre-approved list" if you are unsure of the other options.

You are given 30 minutes to complete this section. Several options are available to help you find your class, such as a keyword, alphabetical or Nice classification search. If you have already conducted a thorough search, you will be able to select your class easily and add it to My List by clicking on "Export to CIPO e-filling".

Section 5: Closing Details

In this section, you are given an opportunity to provide any details or documentation that may support your application. Once complete, click on Next to review and confirm.

Section 6: Review and Confirm

Before payment, you will be given an opportunity to review your application and make any changes as necessary. Once satisfied, click on Add to Cart. In the payment section, click on Proceed to payment.

Section 7: Payment

Several payment options are available, including credit cards (VISA, MasterCard, or American Express), direct payment, postal money order, or cheque (payable in Canadian dollars to the Receiver General for Canada).
You have the option to file your application and pay the fee online or send your completed application and payment by mail.

Review

Upon receiving your application, the Registrar's staff will review it for completeness. In case any information is missing, we will contact you for clarification. Once this process is finalized, we will acknowledge the receipt of your application and assign it a filing date. This filing date is crucial as it determines who is entitled to registration in situations where multiple trademarks are co-pending and there's potential for confusion.

Registration Process Duration

In case of a smooth registration procedure, an average processing time of a trademark in Canada from filing to its registration is approximately 24–32 months, although this may vary, depending, for example, on the backlog of Canadian trademark applications awaiting initial examination. Nevertheless, to counteract this, CIPO has introduced measures to expedite examination in particular circumstances:

Expedited Examination in Special Cases: This option is designed to accelerate registration, catering to specific needs such as enforcement activities, countering counterfeit products, and safeguarding intellectual property on online platforms.

Fast-Track Using the Pre-Approved List: Automatic fast-tracking applies when applicants' goods and services align with the Canadian Goods and Services Manual. The pre-approved list is continually expanding to offer more options.

If you have any more questions or need further details about whether you are eligible for one of these new mechanisms feel free to reach out to a member of our Trademark Agents.

Filing date

Once your trademark application is filed, you will receive a filing date and application number, typically within one day. This filing date provides you with priority over your proposed trademark, even while it's pending registration. You also receive a priority date if you file an application in another country within six months of the first filing. Your trademark application will be entered into the Canadian trademarks database, and you will receive a formal filing acknowledgment and proof sheet with application information.

STEP 3

Initial Evaluation

From this point, your application will be assigned to a trademark examiner. This expert will conduct a comprehensive database search to ensure your trademark doesn't conflict with any existing registrations or pending applications. scrutinize your application compliance with the Trademarks Act and other regulations and conduct a thorough search to identify any marks that may be considered confusingly similar and to check for broad or unclear descriptions. The examination process follows typically taking six months to one year. Should any issues or similar marks arise during this process, you will receive an examiner's report, which must be addressed. You may also be asked to disclaim certain words in your trademark.

You can respond to the examiner's concerns and amend your application as needed, but if your response doesn't satisfy the examiner, you may receive a refusal letter, with the option to appeal to the Federal Court of Canada. The back-and-forth process with the examiner can take several months to a year.
Failure to address an examiner's report may result in the Registrar deeming your application abandoned. Before this occurs, the Registrar will issue a notification, providing you with an opportunity to rectify the situation within a designated timeframe. If you do not respond within the stipulated period, you'll be required to submit a new application, accompanied by an additional fee.

STEP 4

Pre-Publication Search

Prior to advertising in the Trademarks Journal, a second search is performed to detect any potential conflicts with recently registered or applied-for trademarks. If conflicts arise, you'll be notified and given an opportunity to respond. After this, your application is advertised and published in CIPO's Canadian Trademarks Journal, accessible on their website every Wednesday, provides information on applications for public review, allowing others to raise objections before registration. The publication acts as a notice to other trademark owners that your mark is advancing toward registration.

A two-month window follows publication, allowing for any third party to oppose your application. To do this, they must file a statement of opposition or request an extension, accompanied by the stipulated fee. Grounds for opposition may include the belief that your mark is confusingly similar to existing unregistered trademarks or that it lacks distinctiveness.

In case your application faces opposition, you should certainly consider hiring a trademark lawyer. Opposition proceedings can be complex and adversarial, similar to court proceedings, involving evidence, written representations, cross-examinations, and oral hearings.

STEP 5

Registration

If no oppositions are lodged, or having succeeded in an opposition proceeding, your application will proceed towards registration. Upon payment of the government fee, your trademark can be registered. If your application was based on proposed use, you'll need to provide a sworn declaration of use for specific goods and services.

You'll receive a certificate of registration, and your trademark will be listed in the Register of Trademarks. Further challenges won't be entertained. Upon trademark registration, you obtain exclusive rights to utilize the mark throughout Canada for an initial period of 10 years. Subsequently, you have the option to renew your trademark every decade thereafter.

Once a brand is officially registered, it is made publicly accessible through the Canadian Intellectual Property Office's (CIPO) database. This serves as a means of notifying the public about the owner's claim to the mark, effectively reducing the chances of unintentional use of a similar mark by others.
After a brand is successfully registered, the owner gains the privilege of using the ® symbol, signifying its status as a registered trademark.

Registering a trademark grants valuable rights, but it also imposes responsibilities. Expungement can occur for various reasons, such as loss of distinctiveness, abandonment, or non-use.

Requirements for Keeping your Registration

To keep your registration, you must pay a renewal fee every 10 years; the Registrar will provide notice of your payment deadline. You can commence the trademark renewal procedure as early as six months before your registration's expiry, or as late as six months after it has lapsed, or within two months of receiving the formal renewal notice.

Failure to do so may trigger summary expungement proceedings initiated by the Registrar, starting three years after registration. The process involves evidence submission, written arguments, oral hearings, and a final decision by the Registrar, with the option to appeal to the Federal Court of Canada. As navigating this process can be complex, you should consider seeking the support of a registered trademark agent.

Monitoring your application

Once you've submitted your application, you should receive a formal filing acknowledgment and proof sheet from CIPO. This acknowledgment, sent to the address you provided, contains an application number that's vital for tracking your application's status or accessing it in the future. If you filed online, expect this acknowledgment within 7 days after submitting your application; for mailed paper applications, it typically arrives within 20 days from the date of receipt.

The process of registering a trademark in Canada can be intricate and time-consuming, involving several steps and detailed requirements to ensure the protection of intellectual property rights. From the initial application submission to approval, the journey can span several months or even years, contingent upon the application's complexity and the workl oad of the Canadian Intellectual Property Office (CIPO). Therefore, effective monitoring and management of the application are pivotal for a successful registration. It's worth noting that while you can make certain modifications to your application after filing, not all changes are allowed. In some cases, specific modifications may require you to submit an entirely new application.

Keeping tabs on your application status

To facilitate a smooth trademark registration, maintaining regular oversight of your application's progress is paramount:

CIPO's Online Platform: CIPO provides an online platform enabling applicants to track their application status. This resource offers updates, notifications of upcoming deadlines, and crucial information related to your trademark's approval, refusal, or any other significant developments.
Seek Guidance from a Trademark Attorney or Agent: Collaborating with a seasoned trademark professional can alleviate the complexities of monitoring your application. A trademark attorney or agent will take on the responsibility of tracking your application, ensuring all deadlines are met, and assisting in navigating any legal challenges that may arise.

The Benefits of Hiring a Local Representative or lawyer

Successfully navigating the trademark application process is intricate and requires expertise in trademark law and an understanding of the Registrar's office procedures. Even if you are domiciled in Canada, while not mandatory, hiring a registered trademark agent is recommended as they ensure your application is correctly prepared for robust protection, which is crucial when facing challenges to your trademark rights. You should also be aware of unauthorized trademark agents, as they lack the authority to represent applicants in trademark applications. To find a qualified trademark agent, you can utilize the search tool provided by the College of Patent and Trademark Agents (CPATA) to check the current licensing status of a Patent Agent, Trademark Agent, Agent in Training, as well as the registration status of a Foreign Practitioner in Canada. Once you have enlisted an agent, the Registrar will communicate directly with them.

Apart from the legal requirements, there are also numerous additional advantages to partnering with an experienced trademark lawyer. Various legal decisions crop up during the registration process, such as conducting a trademark search, selecting the appropriate categories of goods and services, and responding to challenges or cancellations. For someone lacking in trademark expertise, these tasks can quickly become daunting and time-consuming. Collaborating with a trademark attorney ensures that your registration proceeds smoothly, allowing you to focus on expanding your business in Canada.

For a trouble-free trademark registration process in Chile, Nominus.com offers a reliable solution. We leverage the expertise of local attorneys to guide you through the entire journey, from conducting a thorough trademark viability search to filing the application, managing all necessary formalities, and providing consistent updates. To learn more, visit our dedicated Canadian Trademark Registration webpage.

Conclusion

To conclude this comprehensive guide on Trademark Registration in Canada, we emphasize the pivotal importance of this process for digital businesses. More than a mere formality, trademark registration serves as a robust means of safeguarding your brand's digital identity and market position. Navigating through the potentially intricate and often time-consuming process, you should consider the significant role of a representative agent or lawyer who can expertly guide you and keep tabs on your application's progress. This process is not just about regulatory compliance: registering your trademark helps you to build a competitive edge in the dynamic digital economy, ensuring your business thrives in the ever-evolving Canadian online marketplace.

By Rick Crandon