Obtain Intellectual Property Protection: Trade-marks
- Steps involved in preparing and filing an application
- Flowcharts showing the overall procedures
- Benefits of using professional expertise
- Other aspects
Steps involved in preparing and filing an application
CIPO's publication, A Guide to Trade-marks, gives additional information on the requirements for registering a trade-mark, and outlines the fee schedule.
Is registration mandatory?
No, but it is advisable.
Why register a trade-mark?
Registration is direct (prima facie) evidence of exclusive ownership across Canada and helps ward off potential infringers. It enables you to protect your rights. Having a trade-mark registration is proof of ownership of these rights, and means that the onus or burden of proof shifts to the challenger in the event of a dispute. The process of registration, with its thorough checks for conflicting trade-marks, will ensure that you are claiming a unique mark, and help you avoid infringement of other parties' rights. A registered trade-mark is a prerequisite for franchising a business.
Who can register a trade-mark?
How do I register a trade-mark?
An application is filed together with the appropriate documentation and fee to:
The Registrar of Trade-marks,
Canadian Intellectual Property Office,
Place du Portage I, 50 Victoria Street,
Gatineau, Quebec K1A 0C9
What needs to be included in the application?
- appropriate, completed application form;
- application fee; and
- drawing of the trade-mark if the application is made for a word or words in a special form or a design.
What are the steps of trade-mark registration?
Trade-mark registration usually involves:
- preliminary search (done by you or your agent) of existing trade-marks;
- examination of your application by the Trade-marks Office;
- publishing of the application in the Trade-marks Journal;
- time for opposition (challenges) to the application; and
- allowance and registration (if there is no opposition).
Why is the preliminary search important?
It helps you determine whether your application has a chance for success. It helps you avoid infringing on other people's trade-marks.
Will the Trade-marks Office tell me during my preliminary search if my trade-mark can be registered?
Flowcharts showing the overall procedures
The trade-mark application process is outlined in a summary entitled How Your Trade-mark Application is Processed available on CIPO's Web site. The summary shows the points at which you will be notified about the status of your application and about how long it should take.
Benefits of using professional expertise
Why hire a trade-mark agent?
Trade-mark registration can be a complex process; an experienced agent can save you time and money by avoiding pitfalls such as poorly prepared applications and incomplete research.
How long is registration effective?
A registration is valid for 15 years and is renewable every 15 years thereafter upon payment of a fee.
Does registration in Canada protect rights in other countries?
No. If your products are sold in other countries, you should consider applying for foreign registration. Contact a trade-mark agent or the embassy of the country in question to find out about procedures.
Canada's Trade-marks Act does not contain any marking requirements. However, trade-mark owners often indicate their registration through certain symbols, namely, ® (registered), ™ (trade-mark), SM (service mark), MD (marque déposée) or MC (marque de commerce). Although the Act does not require the use of these symbols, it is advisable to use them. The symbols TM, SM or MC may be used regardless of whether the trade-mark is registered. The ®, or MD, on the other hand, should be used only if the mark is registered. Canada's Precious Metals Marking Act states that you must file a trade-mark application for the trade-mark used on the wares, if you wish to stamp a quality mark (e.g. 10K gold) on your product. The quality mark itself is not mandatory.
What is the difference between a trade-mark and a trade name?
A trade name is the name under which you conduct your business. This could include a provincial registration, provincial incorporation or a federal incorporation. It can be registered as a trade-mark, but only if it is used as such, i.e., used to identify wares or services.
Can I register my own name as a trade-mark?
Normally, you may not register a proper name - neither yours, nor anyone else's - as a trade-mark. An exception may be made if you can demonstrate that the name has become identified in the public mind with certain wares or services.
What other kinds of marks may not be registered?
In general, the following marks may not be registered:
- words that are clearly descriptive (e.g. "delicious" ice cream);
- terms that are misleading;
- words that designate a place of origin (e.g. "Atlantic" cod);
- terms or symbols that are too similar to an existing trade-mark; and
- terms and symbols that are expressly prohibited under the Trade-marks Act.
These latter marks include symbols (coats of arms, badges, crests, etc.) of national and international organizations and terms that are considered immoral or offensive. Other types of marks that may not be registeredare plant variety denominations and protected geographical indications for wines and spirits.