Trade-Marks Guide (page 4 of 13)
Who can apply for registration?
The Office does not register a trade-mark in the name of more than one individual, unless the individuals form a partnership or are engaged in a joint venture, which is considered a lawful association.
How long does registration last?
Your registration is valid for 15 years. You may renew it every 15 years thereafter for a fee.
How much does registration cost?
The cost of registering a trade-mark depends on the individual applicant’s requirements. In some cases, only a filing fee and a registration fee may be required. However, other fees may also apply. If you appoint a trade-mark agent to represent you, additional fees will be required for his or her services.
What to consider before filing an application
The Office of the Registrar of Trade-marks will provide you with the basic information that you need in order to file an application for trade-mark registration. However, the Registrar of Trade-marks cannot prepare your application, advise you on whether your mark is registrable, or conduct a preliminary search of existing trade-marks for you.
Conducting a preliminary search
A good first step is to carry out a preliminary search of existing trade-marks to check whether your trade-mark could be confused with someone else’s. Although not mandatory, this step will assist you in determining whether a similar trade-mark already exists, in order to avoid trade-mark infringement (unauthorized use) and potential lawsuits.
Searching the Canadian Trade-marks Database
You can do a preliminary search of registered and pending applications through the Canadian Trade-marks Database. The listings contained in the Canadian Trade-marks Database cover word marks, slogans, numbers, pictures, and combinations of these. As soon as your application is received, it too becomes part of the public record.
Searches can be conducted using any of several methods, including by trade-mark type or status.
To conduct a proper search, you will have to check for different possible versions of the mark that you wish to register. In the case of a word mark, you should look for all conceivable spellings, including in French. For example, if your trade-mark is “North Pole,” you would search for “North”, “Nord”, and “Pole.”
Also in the online records are crests, badges, and official symbols that fall into the category “Prohibited Marks” in the Trade-marks Act. These records can assist you in making certain that your trade-mark does not fall into a prohibited category.
To begin your search, visit the Canadian Trade-marks Database. A tutorial on the Canadian Trade-marks Database is also available on the website. The tutorial will help you make the most of this information source.
Conducting a search of trade names
Before going any further, you should also consider a search of trade names. Trade names are often also used as trade-marks; trade names can be used as trade-marks even when they are not registered as such.
The name of your company is “North Pole.” “South Pole Inc.” has never have filed for trade-mark registration. However, if the name “South Pole” is known for frozen-water products, the company could argue ownership of the name “South Pole” as a trade name, as well as prior use of a trade-mark.
The Office of the Registrar of Trade-marks would not have the name “South Pole” in its trade-mark records, because it does not register trade names. “South Pole Inc.,” however, could easily find out about your application for “North Pole,” either by doing a search of the Office of the Registrar of Trade-marks records or a search at the time your application is published in the Trade-marks Journal. “South Pole” may then challenge your application during the opposition stage in the registration process.
As trade names may be recorded separately in each province under provincial legislation, there is no complete central inventory containing all current names for Canada as a whole.
As conducting a search of trade names is quite complex, we suggest that you hire a trade-mark agent to do the work for you.
Consider hiring a registered trade-mark agent
Preparing and following through on a trade-mark application is a complex process requiring broad knowledge of trade-mark law and Office of the Registrar of Trade-marks practice — knowledge one can expect a registered trade-mark agent to have.
A resident of Canada who is a barrister or solicitor, or a notary in the province of Quebec, may become a trade-mark agent by passing the qualifying examination or working in the area of trade-mark law for at least 24 months.
Beware of unregistered trade-mark agents! They are not authorized to represent applicants in the presentation and prosecution of applications for trade-marks or in other business before the Office of the Registrar of Trade-marks.
A trained trade-mark agent will make sure that your application is properly drafted in order for your trade-mark to be adequately protected; such protection would be important particularly if a third party should challenge your right to the mark. Hiring such an agent is not mandatory, but is highly recommended.
Once you have appointed an agent, the Office of the Registrar of Trade-marks will correspond with your agent. Should you revoke the appointment of your agent, the Office will then correspond with you directly. You may, however, change trade-mark agents or choose to no longer have one at any time.
The Office of the Registrar of Trade-marks maintains a listing of registered trade-mark agents, but cannot recommend any particular one to you.