How To Register a Trademark
Trademarks are registered with the Canadian Intellectual Property Office (“CIPO”). On CIPO’s website (http://www.cipo.ic.gc.ca/), it suggests that you before applying, prospective applicants take the following two steps: (1) consult CIPO’s Guide to Trademarks and (2) consult their guide to the trademarks application process. This fact sheet will summarize the details of the aforementioned two steps.
Guide to Trademarks
To register a trademark, one must first understand what a trademark is. As per CIPO’s website, “trademarks may be one or a combination of words, sounds or designs used to distinguish the goods or services of one person or organization from those of others in the marketplace.”
Importantly, there are three types of trademarks:
- Ordinary marks consist of “words, sounds and designs used to distinguish the goods and services of one person or company from of others in the marketplace;”
- Certification marks are “used by an individual or organization and licensed by others for the purpose of identifying goods and services that meet a defined standard—for example, the Woolmark design for use on clothing;”
- Distinguishing guises include the shape and design of products or their packaging to distinguish one company’s product from another.
Trademarks are generally eligible for registration, as long as they do not conflict with the Trademarks Act, which stipulates all trademark registration requirements. Some trademarks deemed ineligible for registration include:
- Names and surnames;
- “Deceptively misdescriptive” marks –names that may mislead the consumer as to the goods and services they are about to receive;
- “Words that denote a geographical location commonly known to be the place of origin of such goods or services;” and
- Words, designs and slogans that may be confused with already existing trademarks.
One’s trademark registration is valid for 15 years and if one so chooses, must be renewed every 15 years thereafter for a fee. The fee one pays upon initial registration depends on the requirements of each application.
CIPO trademark application process
Before starting the application process
While it is not necessary, CIPO suggests that prospective applicants carry out a search of existing trademarks prior to starting their application. This can be done online through the Canadian Trademarks Database. The purpose of the search is to help the applicant determine whether a similar trademark already exists, in the hopes of preventing trademark infringement litigation in the future.
It is also important to know that there are Registered Trademark Agents (found in different regions of Canada. You can find the closest Agency near you) who can help prospective applicants navigate the application process. The Office of the Registrar of Trademarks carries a list of all registered trademark agents. While seeking out a registered trademark is not necessary, some prospective applicants may wish to utilize their services.
The trademark application process
As per CIPO’s website, a complete application includes:
- an application for registration;
- a formal drawing, if applicable; and
- the filing fee.
Application for registration
A new application is required for each trademark the applicant wishes to register. That being said, CIPO asserts that it is possible in some cases that one application may cover both the goods and services of a company.
If the prospective applicant wishes to trademark anything that isn’t just words, CIPO requires a formal drawing of the design of the good.
As per CIPO’s requirements, the formal drawing should:
- be in black and white; and
- include a description of colour(s) if colour is a feature of the trademark.
A filing fee must accompany one’s registration application. As mentioned earlier, this fee varies depending each application’s requirements.
Filing the application
The application and necessary fee can be submitted online or by mail. The date all necessary documents for the application are deemed received is called the “filing date.” The filing date is very important as it is the date used to “assess entitlement to registration,” in case there are opponents to the trademark in the future.
After your application is submitted
When the Office of the Registrar of Trademarks receives an application, the Office:
- Conducts a trademark search to make sure the trademark in question does not come in conflict with an already existing trademark;
- Examines the application to ensure it complies with the Trademark Act;
- Publishes the application in the Trademarks Journal, which allows others to reasonably oppose the trademark; and
- Registers the trademark if no one opposes it.
Pending trademarks are advertised in the Trademarks Journal to make the public aware of all pending trademarks so that individuals who have reasonable grounds to oppose the pending trademarks may do so. Oppositions must be made within two months of the trademarks advertisement in the Trademark Journal. CIPO suggests that should someone oppose an applicant’s application, said applicant may want to seek out a registered trademark agent, as litigation can be time-consuming and complex.
Canadian Intellectual Property Office, “Guide to Trade-marks,”http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html.