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Registering a trademark in Canada

One important step in launching a business in Canada is registering a trademark. For those interested in creating and conducting business in the country, the question inevitably arises: "How does trademark registration in Canada work?" After all, a trademark is the primary means of identifying goods and services. Another important reason to register a trademark is to protect it from unauthorized use by third parties and to grant the owner exclusive rights to use the trademark.

Reminder: A trademark is the primary means of identifying goods and services. It helps distinguish one product from another.

So, how do you register a trademark in Canada? Where do you submit an application? How long does this process take? These questions will be answered in this article.

Registering a trademark in Canada

Posted 1 July 2024

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What is a trademark in Canada?

Firstly, it’s important to define what a trademark is according to Canadian legislation and what cannot be registered as a trademark. According to the official Government of Canada website, a trademark in Canada is defined as a combination of letters, words, sounds, or images that distinguish the goods or services of one company from those of others in the market.

Important:
«If people cannot pick your products or services out from the crowd, they might work with another person or company that is easier for them to notice.»

A trademark is unique to each company and holds significance not only for the goods or services a company sells but also for the company itself—its reputation and brand. By registering a trademark in Canada, its owner obtains exclusive rights to use the mark across the entire territory of Canada for a period of 10 years (which can be renewed).

However, not every trademark can be registered; there are specific requirements. Only trademarks that do not conflict with the Canadian Trademark Act can be registered.

Articles 9 and 12 of the Act outline which trademarks can be registered and which are barred from registration. No person can use as a trademark a sign that is, or so nearly resembles as to be likely to be mistaken for:

  1. an armorial bearing, flag, or emblem;
  2. the armorial bearings, crest, or flag of a member of the Canadian Royal Family;
  3. the armorial bearings, crest, or flag of the Governor General of Canada;
  4. any word or symbol likely to lead to the belief that the goods or services in connection with which it is used have royal, vice-regal, or governmental patronage, approval, or authorization;
  5. an armorial bearing, crest, or flag that has been publicly adopted and used;
  6. the emblem of the Red Cross on a white ground;
  7. the emblem of the Red Crescent on a white ground;
  8. the emblem of the Red Crystal on a white ground;
  9. scandalous, obscene, or immoral words;
  10. the arms, crest, or flag of a Canadian university;
  11. a trademark that is confusingly similar to a registered trademark;
  12. portraits or signatures of living persons or persons who have died within the preceding 30 years, unless consent has been obtained;
  13. and others.

Given the extensive list of restrictions, it is advisable to carefully study the Canadian Trademark Act before selecting a trademark in Canada. Equally important is conducting a search to ensure that the desired trademark is not already registered by another party.

Important:
A database for trademark searches in Canada.

The procedure of registering a trademark in Canada

Once a trademark has been chosen without violating Canadian legislation and a successful search has been conducted, you can proceed with its registration. Registering a trademark in Canada is not considered a complex procedure, but it does have several nuances, especially since Canada has been a member of the Madrid Protocol since 2019.

Note:
It is important not to confuse the Madrid Agreement and the Madrid Protocol. Canada, like many other countries, did not join the Madrid Agreement but is a participant in the Madrid Protocol.

Canada’s accession to the Madrid Protocol means that the country has joined the Madrid System for international registration of trademarks.

To protect their trademarks in 120 countries, owners of trademarks in Canada can file just one international application and pay one set of fees.

The registration process includes the following steps:

  • Firstly, before initiating the trademark registration procedure in Canada, as mentioned earlier, a database search needs to be conducted;
  • Next, it is necessary to complete and submit an application for trademark registration to the Canadian Intellectual Property Office (CIPO) and pay the fee;
Important:
The application must include:

    • Applicant’s name and mailing address;
    • Image or description of the trademark (for non-traditional marks, refer to information on the Government of Canada website);
    • Description of the goods and services associated with the trademark;
    • Registration fee;
    • Any other requirements specific to the type of trademark.
  • Each trademark that needs to be registered requires a separate application.
  • Immediately after receiving the application, CIPO employees will check it for compliance with all requirements. If any information is missing, the applicant will be contacted promptly. However, once the application is in order, it will be assigned a filing date — from this date, the application is considered to meet all necessary requirements.
Note:

Not all changes you wish to make to your application after it has been assigned a filing date are permissible. For some changes, the application will have to be resubmitted.

  • After the successful examination of the application and assigning the “filing date,” it’s time for the trademark itself to be examined. CIPO will assess the trademark for similarity with other trademarks and ensure that it complies with the Law.
  • Next, if there are no issues, CIPO publishes the trademark in the Canadian Trademarks Journal.
  • If there are no objections to the trademark registration, it will be registered. The applicant will receive a Certificate of Registration for the trademark, and the trademark itself will appear in the Canadian Trademarks Database.

Trademark Registration Timeline in Canada

The standard timeline for registering a trademark in Canada varies from 6 to 12 months. This timeframe depends on whether there are any questions or clarifications needed regarding the application or the trademark itself.

Conclusion

Registering a trademark in Canada has its nuances that should be considered if trademark registration in this country is needed. Errors in the application or violations of procedural rules can significantly delay the process. Therefore, we recommend entrusting trademark registration in Canada to professionals rather than attempting to do it independently.

GFLO Consultancy experts are pleased to assist and help you with any inquiries, just get in touch or leave a request through the form right below.

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