Trademarks
The process for trademark registration from start to finish is complex and only an experienced lawyer and trademark agent can help you at each stage of the process. You should bear in mind that the government (i.e., the Canadian Intellectual Property Office or CIPO) will only correspond and deal with a Registered Trademark Agent or the applicant. In Canada, most lawyers are not trademark agents; there are also many trademark agents who are not lawyers and will not be able to give you legal advice when needed. As lawyers and trademark agents, we are licensed by the Canadian Intellectual Property Office (CIPO) to file applications for registration of trademarks in Canada on behalf of individuals or companies. We can also file applications for registration of trademarks in the USA on behalf of Canadian residents.
If not federally registered, a "common law" trademark has limited value, as it is difficult to defend the associated rights during a dispute with a competitor. Because of our experience with other trademark litigation cases, we can assist you in the process of the initial selection of a new trademark ("branding") in order to increase the likelihood that CIPO will issue a registration and to reduce the potential for costly legal battles with third parties down the road.
In Canada the application process for registering a trademark takes approximately 1-2 years from the time of filing to the Notice of Allowance.
Here are the general steps to obtain a trademark registration:
1. Application for the Registration of a Trademark
a. For a newly adopted (or proposed) brand or trademark, we recommend conducting first a clearance search to assess the likelihood of confusion with other trademarks, trade names and business names already in use by other parties, which may therefore have pre-existing rights in such mark. The search can be conducted by the client or by a qualified practitioner (recommended), and the required depth of such search varies depending on the client situation. Although not mandatory, a proper search upfront will be of great assistance, as you may find out that it is advisable to re-brand (i.e., to not adopt the proposed trademark), if it is likely to be deemed confusing with a mark that may already be in use by another party.
b. Drafting of an Application should be entrusted to a professional. There is no set form for a trademark application; a custom application must be drafted at this stage. The application must list the wares and/or services to be used in association with the trademark. It is generally preferable to include at the outset a broad list of wares and services, as such list cannot be amended later to add wares and services not listed at the time of filing.
c. Filing of an Application is straightforward; once drafted, the application and the required government fees can be submitted to the Canadian Intellectual Property Office (CIPO) electronically or by mail.
d. A filing certificate / acknowledgement form is sent to the agent of record.
2. Prosecution of the Trade-mark Application
a. An Examiner will review the Application and send the agent an Examiner’s report, listing various objections and demanding revisions or even the withdrawal of the Application. A response is due within a specific time-frame (usually six months).
b. Occasionally, more than one response is required depending on the issues raised by the Examiner. Responding to the Examiner’s objections is a critical part of the process and success hinges on understanding the nature of the objections. This part of the process can stretch for months or years depending on the applicant’s willingness to amend or delete the objectionable parts, and on the Examiner's degree of inflexibility.
c. The Examiner can issue a final rejection of your application if unsatisfied with the answers received to the objections raised. In this case, an appeal to the Federal Court can still result in a satisfactory outcome for your application.
3. Approval, Allowance and Issuance of the Registration
a. After the Examiner is satisfied that the objections raised have been addressed in a satisfactory manner, the Application is approved for advertisement and an approval notice is sent to the agent of record.
b. Once the Application has been advertised (published in the weekly Trademarks Journal), interested third-parties (competitors) have two months in which to formally oppose your registration of the mark.
c. If a competitor decides to formally oppose the registration, then opposition proceedings would start. Opposition is a form of administrative litigation; it is adversarial in nature (similar to court proceedings) and involves strict procedural deadlines. Advice and representation from an IP lawyer with litigation experience is highly recommended in this case.
d. If the mark is not opposed, a Notice of Allowance is issued and sent by CIPO to the agent of record.
e. The final registration fee has to be paid (to CIPO) within six months from the date of the Notice of Allowance, if the application was filed based on “use”. If the Application was filed based on “proposed use”, you will be asked for a declaration stating that you have commenced use of the trademark. If you have not yet commenced using the trademark, requests for extensions of time (to file such declaration) must be filed every six months, until your trademark is actually in use (however, a Declaration of Use will not be accepted after more than three years from the Notice of Allowance).
Trademark Fees
If not federally registered, a "common law" trademark has limited value, as it is difficult to defend the associated rights during a dispute with a competitor. Because of our experience with other trademark litigation cases, we can assist you in the process of the initial selection of a new trademark ("branding") in order to increase the likelihood that CIPO will issue a registration and to reduce the potential for costly legal battles with third parties down the road.
In Canada the application process for registering a trademark takes approximately 1-2 years from the time of filing to the Notice of Allowance.
Here are the general steps to obtain a trademark registration:
1. Application for the Registration of a Trademark
a. For a newly adopted (or proposed) brand or trademark, we recommend conducting first a clearance search to assess the likelihood of confusion with other trademarks, trade names and business names already in use by other parties, which may therefore have pre-existing rights in such mark. The search can be conducted by the client or by a qualified practitioner (recommended), and the required depth of such search varies depending on the client situation. Although not mandatory, a proper search upfront will be of great assistance, as you may find out that it is advisable to re-brand (i.e., to not adopt the proposed trademark), if it is likely to be deemed confusing with a mark that may already be in use by another party.
b. Drafting of an Application should be entrusted to a professional. There is no set form for a trademark application; a custom application must be drafted at this stage. The application must list the wares and/or services to be used in association with the trademark. It is generally preferable to include at the outset a broad list of wares and services, as such list cannot be amended later to add wares and services not listed at the time of filing.
c. Filing of an Application is straightforward; once drafted, the application and the required government fees can be submitted to the Canadian Intellectual Property Office (CIPO) electronically or by mail.
d. A filing certificate / acknowledgement form is sent to the agent of record.
2. Prosecution of the Trade-mark Application
a. An Examiner will review the Application and send the agent an Examiner’s report, listing various objections and demanding revisions or even the withdrawal of the Application. A response is due within a specific time-frame (usually six months).
b. Occasionally, more than one response is required depending on the issues raised by the Examiner. Responding to the Examiner’s objections is a critical part of the process and success hinges on understanding the nature of the objections. This part of the process can stretch for months or years depending on the applicant’s willingness to amend or delete the objectionable parts, and on the Examiner's degree of inflexibility.
c. The Examiner can issue a final rejection of your application if unsatisfied with the answers received to the objections raised. In this case, an appeal to the Federal Court can still result in a satisfactory outcome for your application.
3. Approval, Allowance and Issuance of the Registration
a. After the Examiner is satisfied that the objections raised have been addressed in a satisfactory manner, the Application is approved for advertisement and an approval notice is sent to the agent of record.
b. Once the Application has been advertised (published in the weekly Trademarks Journal), interested third-parties (competitors) have two months in which to formally oppose your registration of the mark.
c. If a competitor decides to formally oppose the registration, then opposition proceedings would start. Opposition is a form of administrative litigation; it is adversarial in nature (similar to court proceedings) and involves strict procedural deadlines. Advice and representation from an IP lawyer with litigation experience is highly recommended in this case.
d. If the mark is not opposed, a Notice of Allowance is issued and sent by CIPO to the agent of record.
e. The final registration fee has to be paid (to CIPO) within six months from the date of the Notice of Allowance, if the application was filed based on “use”. If the Application was filed based on “proposed use”, you will be asked for a declaration stating that you have commenced use of the trademark. If you have not yet commenced using the trademark, requests for extensions of time (to file such declaration) must be filed every six months, until your trademark is actually in use (however, a Declaration of Use will not be accepted after more than three years from the Notice of Allowance).
Trademark Fees
