Trade-Marks Guide (page 6 of 13)

Filing your application

You may file your application and pay the prescribed fee online or you may send your completed application with payment by mail to:

Office of the Registrar of Trade-marks
Canadian Intellectual Property Office
Industry Canada
Place du Portage I
50 Victoria Street
Gatineau QC K1A 0C9

Filing date

Once the Office of the Registrar of Trade-marks has received your application, staff will review it to make sure it is complete. If anything is missing, the Office will contact you to ask that you provide additional information. Once this process is finished, the Office will acknowledge receipt of your completed application and assign a filing date, that is, the date on which your application met all the filing requirements. This filing date is particularly important since it is the date used to assess entitlement to registration.

You may amend your application after filing. However, not all amendments are acceptable. As a result, you may be required to file a new application.

The examination process

When the Office of the Registrar of Trade-marks receives your application, it:

conducts a search of trade-mark records to locate any existing or pending trade-mark with which your trade-mark may be in conflict; if one is found, the Office will inform you of this fact;
examines the application for compliance with the requirements of the Trade-marks Act and Trade-marks Regulations, and informs you of requirements which are not met by the application or of any objection to the registrability of your trade-mark;
publishes the application in the Trade-marks Journal, leaving time for opposition (challenges) to the application; and
allows and registers your trade-mark if no one files an opposition to your application (or if any opposition filed has been decided in your favour).

Search

Examiners conduct a thorough search of records to verify that your trade-mark does not conflict with one already filed or registered.

Examination

The trade-marks examiner assigned to your file then reviews the search results and decides whether your application can be approved for advertisement. The examiner will notify you (or your agent, if you have one) of any objections should he or she determine that there are any. You then have opportunities to respond. If your answers still fail to satisfy the examiner, you will receive a letter informing you that your application has been refused and stating the grounds for this refusal. In the event of refusal, you have the right to appeal to the Federal Court of Canada.

Note: There is no special form required to be used when responding to an examiner’s report, unless you are asked to submit a revised application.

Disclaimers

The examiner may request that you disclaim the right to the exclusive use of a portion of the trade-mark if the appropriate disclaimer statement has not already been included in the application.

Pre-publication search

Prior to advertisement in the Trade-marks Journal, the Office conducts a second search (pre-publication search) to ensure that, in the intervening months, no one has registered, or applied for registration of, a trade-mark that would be in conflict with the one you are seeking to register. The Office will inform you (or your agent if you have one) of any conflicting trade-mark should one be identified and will seek your comments on any such trade-mark.

Publication

If the pre-publication search does not unearth any new objections to your application, it is ready for advertisement in the Trade-marks Journal. The Journal is the official publication listing every application that has been approved for advertisement in Canada. It provides information about your application, including your name and address, the file number, the filing date, the trade-mark, whether the application for registration is based on “use” or “proposed use”, the goods and services in respect of which the trade-mark is used or intended to be used, and any other claims, as applicable (such as, colour claims, disclaimers, etc.). Advertising applications gives any person an opportunity to raise objections to any pending application before it is registered.

The Trade-marks Journal is published every Wednesday.

Opposition

Any person with valid grounds for doing so may oppose a trade-mark application advertised in the Trade-marks Journal. An opposition must be made within two months of the publication date by either filing a statement of opposition or requesting an extension of time to oppose. The prescribed fee must accompany the statement of opposition or request for extension. The Office of the Registrar of Trade-marks will dismiss any opposition that it considers to be frivolous.

If your application is opposed and you do not already have an agent, you are urged to hire one at this point. The same holds true if you wish to oppose someone else’s application. Opposition is a complex and often lengthy process. Opposition proceedings are adversarial in nature and similar to court proceedings. Both parties may file evidence and counter-arguments, cross-examine the evidence of the other party, and make representations at an oral hearing. After a final decision is rendered, it may be appealed to the Federal Court of Canada.

For further information, visit the Trade-marks Opposition Board (TMOB) web pages on oppositions proceedings, or call the TMOB directly at 1-819-997-7300 or the CIPO Client Service Centre, toll-free at 1-866-997-1936 (ask to be transferred to the TMOB).

Allowance and registration

If there is no opposition, or if an opposition has been decided in your favour, your application will be allowed, and the Office of the Registrar of Trade-marks will not consider any further challenges. You will receive a notice of allowance and be asked to pay the prescribed registration fee.

If your application is based on “proposed use,” you will also be asked for a declaration stating that you have commenced use of the trade-mark. If you have not yet commenced using the trade-mark, you may request extensions of time until your trade-mark is actually in use.

The final step, once you have fulfilled these requirements, is for the Office to issue a certificate of registration and to enter the trade-mark in the Register of Trade-marks.