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.
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.
The average time frame for the registration approval is 17 months, if no objections or oppositions arise.
No. Canada is the territorial limit (export from Canada included).
Yes, a scanned Power of Attorney is required.
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
Yes. Your business competitors can attack your trademark on the basis of non-use. Non-use is a valid ground for cancellation.
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.
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.
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
Yes, Canada uses it mandatorily since June 17, 2019.
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.
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.
Yes. It is legal to use an unregistered trademark for goods and services.
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.
You may access the national office by clicking this link: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00002.html
No. It is not a requirement for registration.
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
Anyone may oppose or object to a trademark application.
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
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
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.
Yes, Canada is a member of the Madrid Protocol.
Period statements are not mandatory. The mark is only vulnerable when it is not in use for a period of 3 years.
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.
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.
No documentation is necessary for trademark renewal.
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.