What trademark registration changes apply in Canada as of June 2019?
As of June 17, 2019 important changes will be implemented in the legal framework of trademark registration in Canada that will modernize and simplify the processes and allow access to three international treaties: Nice Agreement, Madrid Protocol and the Singapore Treaty.
The modernization of the trademark registration process will bring important benefits, most importantly:
- The reduction of trademark registration fees for approximately 50% of the applicants, given the elimination of the final registration fees (CIPO, 2019). This fee reduction applies to 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 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 will be implemented on June 17, 2019, the validity of trademarks that are registered or renewed after this date will be reduced from 15 to 10 years.
What is a Filing Basis?
When filing a trademark application in Canada, a “Filing Basis” must be selected. You can select from three possible options:
1. “Use in Commerce” basis
If you are currently using your trademark in Canada, we can file your application on a “Use in Commerce” basis.
In this case, you will need to provide the date of first use in commerce in Canada for each of the products and/or services included in the application. The date of first use must be before the filing date.
2. “Proposed Use” basis
If you are not using your trademark in Canada, we can still file your application on a “Proposed Use” basis. In this case, your application will be processed normally, but once it is accepted for registration (approximately 12 months after the filing date), you must provide the date of first use in commerce in Canada for each of the products and/or services included in the application, when paying the registration fees (Step 3 – Trademark Registration Certificate).
The trademark certificate will be issued only for the products and/or services for which a Declaration of Use is filed.
Note: If you are not using your trademark before the Step 3 deadline (within three years from the date of filing or six months from the date of the notice of allowance) or if you have not started to use the trademark in relation to all the products and/or services included in the application, you can request an extension of time by paying an additional fee. You may also choose not to apply for an extension of time and have the trademark certificate issued only for the products and/or services that are already used in commerce in Canada and later file an application for amendment to extend the list of products and/or services.
3. “Foreign Registration” basis
If your trademark has been filed or registered in your country of origin, we can file your application in Canada on the basis of the “Foreign Registration” if the following conditions apply: your trademark is not similar and cannot be confused with another trademark already registered in Canada, it is not a prohibited trademark or contrary to morality or public order and it is not without distinctive character having regard to the circumstances including its use in any country. Additional fees have to be paid for the filing of foreign certificates.
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 12 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.
Proof of use – It is not required in Australia to provide proof of use; however, if the application is Proposed Use, you have to file for a declaration of use.
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 voluntarily and will be mandatory probably in year 2018.
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.
Once my trademark has been registered, for how many years will be valid?
The initial term is 15 years from the date of registration.
What will be the renewal date of my trademark?
Count 15 years from the date your trademark registration was granted.
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. There are 4 bases for filing an application.
- Prior use in Canada
- Intent to use in Canada
- Make known in Canada
- Registration and use in international territories
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.
Is Canada a member of the Madrid System?
No, Canada is not a member of the Madrid Protocol. On the other hand, Canada is a member of the international treaty – Paris Convention.
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 are made every 15 years from date of first renewal.
What will be the renewal date of my trademark?
Count 15 years from the date your trademark registration was granted.
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 products and services in order to distinguish them in the market. The name, the verbal element, is not the only component that distinguishes a trademark; figurative elements such as logos, design, images, colors and sounds also create an identity that can be protected through 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 symbol to show that the trademark has been filed at the trademarks office and is still undergoing the registration process.
SM Some countries use this symbol to show that the service mark has been filed at the trademarks office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
There are many ways to lay claim to your work. Trademarks, patents, and copyrights offer protection for owners of intellectual property. 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 a service 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 because we all have them. You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to a problem to secure a patent.
Copyright protect published, performed, or printed creative works. People who produce artistic or musical work seek to protect their “right” to stop others from “copying” what they do. Copyright protection protects any original creative works of authors including:
- 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.
A trademark, patent, or copyright are all examples of ways you protect your intellectual property. Your right 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?
You recognize a registered trademark by the symbol of a circle-R following the trademark name or graphic image. Various typographic symbols show copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but a best practice is to use a 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 sign shows the brand name for an unregistered trademark classified as a product (classes 1 to 34). The owner uses this sign to mark what they believe is their brand mark.
- SM: The SM sign is identical to the TM sign except it designates a service mark (classes 35 to 45).
- ®: ®: Use the ® symbol once you register a trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to mark a copyright. The word copyright is substitute sign for Follow it with the year of the publication and owner's name. Use it whether the work has obtained copyright registration 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 are best describe your business activity.
There are 45 classes – 34 for products and 11 for services – which countries from around the world have standardized for international use under the "Nice International Classification".
These classes group all known products and services. You can register the same trademark if there are similar classes, for example, you may register the trademark KING for computers in class 23, and you can also register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is possible, then for two entities conducting business in different classes to use the identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. You can choose multiple classes under which to conduct business if you feel the protection must extend beyond only one class.
You can perform a search of your class with the following tool Trademark Class Search
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? In the United States, under what common law, people can lay claim to a mark if they use it. It is not necessary to formally register a trademark. This fact and the sovereignty states have over the creation of chartered business entities and trade names, makes a trademark search imperative before one spends time and money registered a trademark.
Too many people use a name without knowing if they have legal coverage, and they put up big marketing campaigns with names that later they find they cannot use. Performing a Comprehensive Search Study before you decide to register your brand mark is a wise decision especially when you consider future risks of litigation.
It is a good idea to conduct a Study before you start doing 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. That company may be able to object to your use of the trademark and prohibit you from using the mark in a court of law.
What is a preliminary trademark search?
Your preliminary trademark search is an important first step before you spend time and money considering whether to apply for a potential trademark or not.
If you have trademark experience, you can use free online resources like our Trademark Searchengine, or the Trademark Electronic Search System(TESS) offered to the public by the US Patent and Trademark Office(USPTO) to search for existing marks that are identical to your planned trademark. While preliminary trademark searches are a critical part of your registration process, a successful search that show no conflicts with identical marks does not necessarily mean the Trademark Office will not reject your registration application.
if you have little or no experience dealing with trademarks, we suggest you find a professional help. Our company offers the offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
How do I perform a trademark search?
First, we recommend your start by defining the class you want to register. You can find your class, using our Trademark Class Search tool. Using this tool you enter your product/service, and it will tell you the class or classes you should register.
After you have found your class(es), you can go directly to your country's Trademark Office and perform the search there. You can also try our Trademark Search engines.
When searching, try different combinations of your name. For example, if you are searching for AMAZON, look for AMASON, HAMAZON, or similar word patterns. Try several different combinations of words and spellings.
Notice that several countries do not have online trademarks databases. You must go to local Trademark Office and ask for a list of trademarks.
Trademark Search may be challenging and time-consuming and, if you do not have the time or experience, our company offers the service Trademark Comprehensive Study. The Study will give you details about the classes where you might want to register your trademark, it will also include a list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
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 find a professional help. Our company offers the offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you have some knowledge about trademark registration, you can search using our Trademark Search engine. If not, we recommend hiring a trademark attorney or trademark service like Marcaria.com to handle your trademark registration requirements, especially a trademark search because the entire process is complex and takes time.
Notice that if you do not complete the application process carefully, the registration process could be extended many months and cost 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 marks. Globalization of markets also raises the question of entering international markets and registration of marks in foreign countries to protect your brand and your property rights.
You need to understand that even a completed comprehensive trademark search does not guarantee acceptance and registration of your mark. A Marcaria.com Trademark Comprehensive Study includes a more extensive review process and, more significantly, a formal opinion estimating the probability of your application's acceptance.