Most businesses, whether they know it or not, have words and logos that they use as trademarks. The value of owning a registered trademark often far exceeds the cost of the process to register a trademark.
This article is a quick reference for businesses to understand the what, why, when, where, and how of Canadian trademarks.
What makes a good trademark?
Not all trademarks are created equal!
To be registrable as a trademark in Canada, a mark must meet certain inherent registrability criteria. For example, a trademark is not registrable if it is clearly descriptive or deceptively misdescriptive of the associated goods and/or services.
Just because a mark is registrable does not mean it is a good trademark. The strongest trademarks are made-up words – think KODAK® or XEROX®. Since there is no inherent meaning to these made-up words, they are distinctive and unique. Weak trademarks generally lack distinctiveness. For example, weak trademarks tend to be suggestive of the associated goods and/or services or contain commonly used words or phrases in the relevant field.
What is a registrability search and why should I get one?
Trademark registrability searches are optional but strongly recommended prior to filing. A registrability search will identify any obvious obstacles to registration of your mark, such as similar marks already on the Register, and will also note any inherent characteristics of the mark that might present obstacles to registration or render a mark unregistrable.
Registrability searches are important to conduct before filing and/or using a trademark. Without searches, companies can invest significant time and resources into building a brand and reputation, only to later find out that their chosen mark is not available for use. The resources required to re-brand and the intangible losses associated with abandoning the reputation and goodwill acquired in the original mark can be significant.
Why register a trademark?
There are many benefits to owning a registered trademark in Canada:
- A registered trademark is presumed to be a valid trademark.
- A registered trademark gives the owner the right to exclusive use of the trademark in Canada.
- A registered trademark will block registration of later-filed confusingly similar marks.
- A registered trademark discourages others from using your trademark without your permission.
- A registered trademark grants the owner more rights in the mark and more routes to enforce the trademark as compared to a common law trademark.
- A registered trademark protects the value of the mark.
- Registered trademarks are valuable business assets in the event of a merger or acquisition.
- Trademark registration is often required to access brand enforcement resources on many online platforms.
- The costs of trademark registration are minimal in comparison to costs of enforcing or defending an unregistered mark.
When should I file my trademark application?
As soon as possible! In Canada, you do not have to be using your mark to apply for or register your mark. Use is required, however, to maintain a trademark registration.
We recommend engaging a trademark agent to conduct a trademark search and/or file your trademark before you start using the mark to avoid investing time and resources into use of a mark that may not be registrable.
Where should I register my trademark?
You should consider applying for trademarks in all jurisdictions where you are selling. If this filing strategy is not possible for your business, you should at least file in the jurisdictions that make up your largest market(s).
A trademark agent can help you prioritize your trademark searches and filings and advise on cost-saving strategies for filing in multiple jurisdictions.
How do I register my trademark?
Once a (recommended) but not required registrability search has been completed, the trademark registration process can be broken down into four (4) stages: filing, examination, advertisement, and registration.
- Filing: Details of the desired trademark and applicant information must be submitted to the Canadian Intellectual Property Office (CIPO) and a filing fee must be paid.
- Examination: After filing, a trademark application will be reviewed by an Examiner at CIPO. If the Examiner has any objections to registration of the mark, an Office Action will be issued. Office Actions detail the Examiner’s objection and allow an applicant to amend the application or submit arguments to overcome the objection. If the Examiner has no objections or if the Examiner’s objections are resolved, the mark will be approved for advertisement in the Canadian Trademarks Journal.
- Advertisement: Within the two (2) month period following advertisement, any third-party can oppose registration of the mark. If initiated, opposition proceedings can be lengthy and expensive. Depending on the nature of the opposition, there may be numerous ways of resolving an opposition (e.g., the parties might settle, the application might be amended, or registration of the mark might be refused).
- Registration & Renewal: Once an application successfully clears the examination and advertisement stages, the mark will register. The registration period for a trademark in Canada is ten (10) years and can be renewed for subsequent ten (10) year periods in perpetuity.
If you are interested in pursuing trademark registrations for your brand or if you have any questions about trademarks or the registration process in Canada, do not hesitate to contact one of our experts today!
