BRIEF GUIDE ON TRADEMARK REGISTRATION IN CANADA

BRIEF GUIDE ON TRADEMARK REGISTRATION IN CANADA

Traditionally, before the implementation of trademark registration, there was the trademark policy. This policy provides that whoever was the first in time to sell their goods and services under a particular mark was deemed the rightful trademark owner. Now, such policy is called First-to-Use and it applies whether the mark in use was registered or not. Nonetheless, First-to-file assigns trademark rights and priority to applicants who applied first for trademark registration regardless of whether the mark was in commercial use by the applicant or others.

To avoid being a victim of the later, here’s a guide on trademark registration.

What is a Trademark?

A Trademark is a sign, symbol, color, texture, design, word, hologram, image, or a combination of these used or proposed to be used by a person to distinguish their goods and services from others. Here, a person, who is the applicant may be an individual, corporation, partnership, joint venture, association, or trade union. As a property right, a trademark owner can sell, transfer, bequeath, or assign the mark to another. In such a situation, it is advisable to inform the Trademark Office to avoid confusion in ownership of the mark and potential issues with trademark infringement.

Also, it is not often required, but there are symbols used to depict trademark registrations. These symbols include –

® - Registered

™ - Trademark

(SM) – Service Mark

(MC) – Marque de commerce

What to Register?

Trademark registration is primarily governed by the Trademarks Act. Therefore, sign, symbol, color, texture, design, word, hologram, image, or a combination of these that are not in contravention with the law can be registered.

A trademark that cannot be registered or are unregistrable are:

• Names and Surnames;
• Place of Origin;
• Geographical origin of a wine, spirit, food, or agricultural produce;
• Denomination of Plant variety and specie;
• Descriptive marks;
• Deceptive marks;
• Registered or pending trademark;
• Words in foreign languages;
• Identical marks;
• Prohibited marks.

Duration of Registered Marks

From the date of registration, the trademark lasts for ten (10) years. If in use within this period, the applicant can file for renewal for a fee. If it is not in use by the expiration of the ten (10) years, it cannot be renewed. A new application must be filed.

Steps to Registration

These are the steps registering your mark:

• Search
• Filing
• Examination
• Pre-publication search
• Publication
• Opposition
• Registration

Search

1. Brainstorm on a name and mark, and the class of goods or services it belongs to.
2. Search through the Canadian Trademarks Database for active, inactive, official, and prohibited trademarks.
3. Consider hiring a registered trademark agent if overwhelmed.

Filing

A Trademark application consists of the following:

• Applicant’s name and mailing address
• Mark’s description or representation or both. The representation shall not exceed 8cmx8cm in size.
• A specific statement on the goods and services associated or to be associated with the mark. These goods and services should be categorized according to Nice classification.
• The Application fee payable with credit or debit card, direct payment, or postal money order.
• Additional requirements, if any.

An application for trademark registration can be submitted online or by mail. Upon confirmation of the application and its review by the Registrar, you shall receive a filing date. This filing date shows that you have met all the requirements for filing and also grants you priority in the event of confusion or dispute.

Examination, Publication, and Registration

This process carried out by the Trademark Office are:

- To examine that the application is not in contravention with the trademarks Act.

- To search the trademarks database for conflicts with registered or pending trademarks.

- To raise objections when an application is in default of the law or regulations.

- To publish the application in the journal for the general public to challenge the application.

- To register the mark if there is no challenge or opposition from the general public, or if there is a challenge, the decision was to your favor.

Opposition

This step invites the public to challenge your application. To challenge, the opposer will file a Statement of Opposition and submit evidence and written representation or statement to the opposition. The Applicant in return will file a counter statement and submit it with evidence and written statement. Thereafter, there will be a hearing to the opposition. The Registrar after the hearing will make a final decision on whether to maintain, amend, or expunge the application. The Applicant, if unsatisfied with the decision, can appeal to the Federal Court of Canada.

Conclusion

This remains a brief guide to registration. If you want to file for a trademark, it is advisable to use the services of a registered trademark lawyer to avoid a cumbersome process.