Trade-Marks Guide (page 8 of 13)

Trade-mark information — Beyond the Basics

Other trade-mark procedures

Registering a trade-mark outside Canada

Registering your trade-mark with the Office of the Registrar of Trade-marks protects your rights in Canada only. If you wish to sell goods or services in other countries, you should consider trade-mark registration(s) in those countries as well.

For more information, contact a trade-mark agent or the applicable Intellectual Property Office abroad.

Applicants residing outside Canada

If you are applying for registration of a trade-mark in Canada, but reside in a country other than Canada, you must appoint a representative for service in Canada to whom correspondence from the Office of the Registrar of Trade-marks will be directed.

It is important to note that, contrary to a registered trade-mark agent based in Canada, a representative for service is not entitled to act on your behalf in any business before the Office of the Registrar of Trade-marks. The role of a representative for service is solely to act as a point of correspondence within Canada (from CIPO to you via your representative for service).

A registered trade-mark agent in Canada can also act as your representative for service if you choose to appoint this registered trade-mark agent to act in this capacity.

Please contact the CIPO Client Service Centre for further information.

Expungement of a trade-mark registration

The registration of a trade-mark provides the registered owner with a very valuable right. However, in order to retain such a right, the registered owner must fulfill specific responsibilities; nonfulfillment of these responsibilities may result in expungement of the trade-mark from the Register of Trade-marks. Grounds for expungement include ownership of a trade-mark, distinctiveness of a trade-mark, abandonment of a registered trade-mark, and non-use of a trade-mark. The Office of the Registrar of Trade-marks is responsible for administering only the summary expungement proceedings based on non-use (section 45 proceedings).

Renewal fee

To maintain registration, the registered owner must pay a renewal fee every 15 years. Failure to pay such a fee on time will result in the expungement of the trade-mark registration from the Register of Trade-marks. The Registrar of Trade-marks will send a notice stating the deadline by which the applicant is required to pay the prescribed renewal fee.