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.
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 - from application to registration without opposition - is 12 months up to 2 years.
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 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.
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 voluntarily and will be mandatory probably in year 2018.
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.
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.
The initial term is 15 years from the date of registration.
Count 15 years from the date your trademark registration was granted.
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. 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
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.
No, Canada is not a member of the Madrid Protocol. On the other hand, Canada is a member of the international treaty – Paris Convention.
Period statements are not mandatory. The mark is only vulnerable when it is not in use for a period of 3 years.
Renewals are made every 15 years from date of first renewal.
Count 15 years from the date your trademark registration was granted.
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.