This article provides a complete guide on how to register a trademark in Canada.
Why is trademark important for a business?
A business or brand or company will be successful only when people can pick their products and services out from the crowd. If you are a business owner or planning to start one, getting a trademark is imperative to ensure people recognize your brand. This is because a reputed image in the market is essential to beat the high competition and succeed in the market. And a trademark is a sure-shot way to build your brand’s image in consumers’ minds.
For example, let us analyze the link between Starbucks and its famous trademark logo. Along with quality coffee and exceptional brand marketing, the iconic Starbucks logo has played a major role in the success story of the business.
Thus, every business entity must get a registered trademark, no matter what type of goods or services they offer. Along with establishing the brand’s identity in the market, a trademark will also enhance the brand’s retention in consumers’ memories and prevent someone else from using your unique identity mark. Therefore, it is safe to say that trademarks are a valuable form of intellectual property and one of the best business assets for every company.
Is it necessary to trademark a business name?
By registering a trademark, the trademark owner gets the exclusive rights to use the mark in Canada for ten years. After 10 years, the registered trademark owner can renew the mark by paying renewal fee. Although registering a trademark is not a necessity as using an unregistered mark for a long period of time also grants rights under common law. But registering your trademark is an evidence of ownership saving you from legal battles and associated complications.
Can I trademark my business name?
Yes, business names or trade names can be trademarked with Canadian Office. Under the Canadian Trademark Law, you can register your business name and use it as a trademark to identify the goods and services offered by your business. But the question is, how to register a trademark in Canada?
How do I trademark a logo and name in Canada?
In Canada, Canada Intellectual Property Office (CIPO) handles the procedures related to Canadian trademark registration. There are many stages in the trademark registration process. However, it should be noted that a registered trademark in Canada will prevent trademark infringement only in Canada. Thus, one should get an international trademark if you are planning to expand your business outside Canada to avoid any trademark dispute.
How to Register a Trademark in Canada?
So you have decided to start a business. After exhaustive research, you have arrived at a perfect business name that described your brand aptly. And now you want to register your business name in Canada to receive trademark ownership. The process is long, complex, and requires knowledge of legal regulations. Here is the complete step by step process to register a trademark in Canada:
1. Trademark Search
A trademark availability search is the first step towards trademark registration. A trademark search is a comprehensive look-through of all the trademarks to find any similar or identical trademark. This is because if you try to register a trademark similar to an existing trademark, there are high chances that CIPO may reject your trademark application.
How to Perform a Trademark Search for Free
You can use the Canadian Trademarks Database for conducting a trademark search by yourself. This database is a pool of prohibited marks, official marks, active as well as inactive (pending) trademarks in Canada. However, to ensure a perfect and comprehensive trademark search, one should hire a trademark agent or trademark law firm.
To make sure that the search is comprehensive, one should check for several possible versions of the applied-for trademark. For a standard word or words trademark, check for all possible spellings, even in French. For example, if your applied-for mark is “North Way,” search the database for “North”, “Nord”, and “Way.”
The next step after trademark search is trademark application filing with application fee and documents.
2. Trademark Application Formalization
Once you have applied for the trademark registration, CIPO will assign a filing date and application number to your application if it meets the requirements. CIPO will also run a trademark search for your proposed trademark to find similar or identical trademarks. CIPO uses the Canadian Trademark Database as well as other advanced databases to be extra sure about confusing marks. Therefore, it gets imperative that you hire a professional law firm for conducting a trademark search. Also, if there are no similar trademarks, CIPO labels the application as “formalized.”
If your application is labeled as formalized, CIPO sends an acknowledgment along with a proof sheet with your application details. Usually, it takes 7 days for an online application and 20 days for an offline application case to get the acknowledgment. Moreover, the applicant has the option to inform CIPO if there are any discrepancies, errors, or left-outs in the proof sheet.
3. Trademark Application Examination
CIPO’s trademark examiner will examine the application and decide whether the applicant’s trademark can be approved for advertising in the Trademark Journal. Here, the Canadian trademark examiner will ensure that the trademark application does not contravene the Trademarks law and Regulation. However, if the trademark application has issues, the examiner will inform you in one of the following ways:
- Via a phone call if the issues are simple that can be corrected verbally
- Via a report, if the application has some complex issues. The applicant has six months to respond to the issues.
The grounds of objection can be many including the likelihood of confusion in the consumers, non-distinctive trademarks, arbitrary marks, similarity with some other trademark, etc. Now, after the approval of your trademark application, CIPO will send a formal notice. Further on, CIPO will continue with its publication in the Trademark Journal. And if CIPO rejects the application, the applicant can appeal to the Federal Court of Canada.
The Trademark application will be published in the Trademark Journal after 2 months of approval. And after 2 months of the advertisement in the journal, others can send oppositions against the trademark in connection. In case of any opposition against trademark in question, the Trademarks Opposition Board will send you written notice.
After the applicant receives the statement of opposition, they have 2 months to file a counter statement. The board allows the applicant and the opponent to file direct evidence and arguments along with an oral hearing under trade-marks act. Now, there are 2 options forward:
- A successful opposition will result in partial or complete refusal of your application.
- A withdrawn or failed opposition will cause your application to move further in the procedure of allowance.
Now, CIPO will issue a certificate of registration (certification mark) via mail to the applicant. A certification mark is essentially a proof that your trademark is now in Canadian trademark register.
How to Register an International Trademark?
Trademark registration with national agencies such as UK Intellectual Property Office, USPTO, CIPO will protect the trademark protection from infringement inside that country . For getting an international trademark, you have the following 2 options:
- If you are from any European Union nation, then you can get a Community Trademark. A CTM provides trademark rights in all 27 EU countries via a single application.
- Also, you can refer to Madrid Protocol for getting trademark registration in many countries by a single trademark application.
Why Should You Choose TMReady for All Your Trademark Needs?
We at TMReady provide a complete set of services aimed at easing the path to trademark registration. We assist you from the very first step, i.e., trademark clearance search to eliminate trademark infringement. Moreover, we also offer monitoring services to keep an eye on your competitors’ marks that may try to dilute your mark. Along with trademark search and monitoring, TMReady also provides trademark docketing and paralegal services providing legal remedies. Our services are delivered by an expert team of professionals to ensure the best reports. Do you have any more questions? Visit us and ask away