What trademark registration changes apply 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:
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.
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.
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 Proof of Use.
Publication – The particulars of the application are made accessible to the public and 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 application, 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
- 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?
You must prove that the mark was used 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.
Does having a registered trademark in Canada afford me any right?
Under the “first to use” jurisdiction, there is no need for registration to obtain rights to a mark as long as you can prove that you are the first to use it. However, having your mark registered is an evidence of validity and ownership.
What is the website of the national trademark office?
Is there any need to use my trademark before I apply for registration?
No. It is not a requirement for registration.
Can a Trademark Application be opposed?
Yes. Applications can be opposed on the grounds of:
- Violation of Canadian law
- Proprietary rights
- Descriptive mark
- Breach of copyright
- Conflict with registered designs
- Bad faith
- Conflict with a company name
- Unauthorized use of protected insignia or emblem
- Goods/services are not specifically defined
Who can oppose my trademark registration?
Anyone may oppose or object to a trademark application.
Is it possible to cancel a registration?
Yes, it’s possible based on the following grounds:
- Non-distinctive mark
- Misleading and disparaging mark
- Functional mark
- Generic mark
- Geographically indicated mark
- Emblem or badge is included in the mark
- Jurisdiction-prohibited mark
- Abandoned mark
- Other reasons depending on circumstances
Are there any rights established by having a registered trademark?
Yes. The following rights are obtained by the trademark owner:
- Exclusive authority to use the mark
- Right to oppose other applications that may cause conflict with his trademark
- Right to cancel other applications with conflicting registration issues
- Right to file for infringement case against third-parties that use look-alike marks
- Right to give license or permit to third-parties that want to use the mark
- Right to receive damages from third-parties guilty of infringement
How long is the opposition period?
The opposition period starts after the date of formal examination and once the application for opposing the registration is published. It ends two months following the publication.
Is Canada a member of the Madrid System?
Yes, Canada is a member of the Madrid Protocol.
Do I need to present periodic statement of use?
Period statements are not mandatory. The mark is only vulnerable when it is not in use for a period of 3 years.
When should I renew my trademark?
Renewals must be made after 15 years for trademarks that were registered or renewed before June 17, 2019, and after 10 years for trademarks registered or renewed after that date.
What will be the renewal date of my trademark?
Count 15 years from the date your trademark registration was granted, if it was registered or renewed before June 17, 2019. Registrations or renewals after that date last 10 years. Trademark can be renewed 6 months before the renewal date.
Is there any documentation that should be presented when renewing a trademark?
No documentation is necessary for trademark renewal.
If my trademark expires, do I have a grace period?
Yes. You will receive a notice from the Registrar and you may renew your mark within a 6-month period from the date of notice. No penalties are applied for late renewals.
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. The other company may object to you using the trademark and legally prohibit you from doing so.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.