Trade-Marks Guide (page 12 of 13)

Common errors to avoid

Before filing your trade-mark application, take some time to go through the following checklist for useful information to help you avoid common errors made by applicants that result in delays in the processing of applications.

Fee

Remember that each application must be accompanied with a filing fee (non-refundable):

Note: Payment may be made by credit card (VISA, MasterCard, or American Express), direct payment, postal money order, or cheque (the postal money order or cheque must be made payable, in Canadian dollars, to the Receiver General for Canada). Do not add federal and provincial taxes.

Goods/services

You may not use a trade-mark registered by someone else to describe your goods or services. Registered trade-marks that have become part of everyday language but are nevertheless registered trade-marks include “yo-yo,” “bubble wrap,” and “Kleenex.” Search in the Canadian Trade-marks Database to make sure that the terms you wish to use to describe your goods or services are not already registered trade-marks.

Make sure that you include all the goods or services with which you intend to use, or have used, your trade-mark, as you will not be permitted to list additional goods or services after you have filed the application. Remember that goods or services that have been used should be listed separately from goods or services that are proposed to be used.

There is a requirement in the Trade-marks Act that the goods or services applied for be set out in specific ordinary commercial terms. In other words, your application should state common names for the goods and services and use wording that is as complete and as specific as possible (e.g., shirt, bread, sofa, etc.). To assist you in this, the Wares and Services Manual provides acceptable identifications of many goods and services and includes guidelines for identifying those goods and services not listed.

Date of first use in Canada

If you have used your trade-mark in Canada in association with goods or services, you must provide the Office of the Registrar of Trade-marks with the date of first use. Make sure that the date of first use does not fall AFTER the filing date of your application. If the date of first use falls AFTER the filing date, it may be
best to file for a proposed trade-mark.

Acceptable date of first use

When only the month and year are stated as the date of first use, the last day of that month will be deemed the effective date. When only the year is named, December 31 of that year will be deemed the effective date. However, in all cases, the date of first use cannot be subsequent to the date of filing of the application. For example, if you filed your application in 2004, and then state that you have used your trade-mark in association with your goods or services “since 2004,” the Office of the Registrar of Trade-marks will assume that this means that you have been using the goods or services since the last day of 2004. This could render your date of first use unacceptable if you filed in 2004 prior to December 31 since the date of first use would then fall AFTER your filing date.

Is it a word, or is it a design?

You must be clear about what you wish to register. Is it a word or words not depicted in a special form? Is it a design that includes a special form? In the first instance, where there is no special form, simply state “The trade-mark is,” and, following this statement, set out the word or words in upper- or lower-case letters. In the second instance, where the trade-mark is a design, state “The trade-mark is shown in the accompanying drawing,” and attach the drawing to the application in the appropriate area on your application. If you are having trouble deciding what you want to register, you can refer to the Application section of this guide.

Applicant

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.