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TRADEMARKS IN CANADA
The Canadian Intellectual Property Office website defines a trademark as “a combination of letters, words, sounds, or designs that differentiate one company’s products or services from those of other companies”. Examples of universally recognizable trademarks include McDonald’s golden arches, the Apple Inc. logo, and Google’s logo. As a business, you may be able to trademark your business name, logo, or other distinct business identifiers if they are distinctive to your brand. If you are thinking about registering your own trademark or simply want to learn more about trademarks, the Canadian Intellectual Property Office’s website has up-to-date and detailed information setting out procedures and guidelines regarding various types of intellectual property. Below you will find more information on the trademark application process and the benefits of having a registered trademark.
THE TRADEMARK APPLICATION PROCESS
The trademark application process consists of five stages: formalities, examination, publication, opposition, and registration. The formalities stage of the trademark application process includes filling out the application form, paying the applicable fees, and ensuring the application meets the filing requirements of the Canadian Intellectual Property Office. After the application has been submitted, it will be marked as formalized. It is important to note that just because a trademark application has been marked as formalized, it does not mean it will be registered.
Next, the application will be reviewed by an examiner who will conduct a thorough search of the trademark database and the Trademarks Act, to ensure there are no issues with your proposed trademark. If minor details about the trademark application can be amended that would otherwise make the application approved, the examiner will permit a verbal response to the problems. If the problem is bigger, you will receive written notice and be granted six months to respond. If the examiner approves the application, it will move on to the next stage, which is publication.
During the publication stage, the Canadian Intellectual Property Office will publish the approved application in the Trademarks Journal. At this stage, individuals or entities who oppose your trademark will have two months from the date of publication to submit a statement of opposition. Once a statement of opposition has been filed, the trademark status will be paused pending the outcome of the opposition. If the opposition is successful, the trademark will be either rejected in full or in part, otherwise, it will proceed to the final stage of registration.
The final step of the trademark application process is registering the trademark. If nobody opposes the trademark, or if any attempts of opposition are unsuccessful, the trademark will be registered, and you will receive a certificate of registration for the trademark. In Canada, a trademark application may take approximately 24-36 months to be registered.
While you do not need a business lawyer or a trademark agent for the purpose of registering your trademark, we highly recommend that you obtain advice from a business lawyer or trademark agent prior to making an application for a trademark with the Canadian Intellectual Property Office.
BENEFITS OF REGISTERING A TRADEMARK
Registering a trademark of your business name, logo, or other distinct identifiers can be advantageous when building brand awareness. For instance, having a registered trademark for your business name or logo can prevent confusion among your customers who may think a business with a similar name or logo is yours. Another significant benefit of having a registered trademark for your business is that you will enjoy the exclusive rights of the trademark across Canada. Registering a trademark also enables the trademark owner to license out the use of their trademark through the use of licensing agreements. Furthermore, having a registered trademark provides for increased or stronger legal remedies if someone infringes upon your trademark. For example, the courts may be quicker to issue an injunction against the individual or business that is committing the trademark infringement, thereby preventing further misuse of your trademark.
If you are considering registering a trademark for your business name, logo, or other distinct business identifiers, contact us today for an initial consultation during which we can answer any questions you may have about the trademark registration process.
Disclaimer: The information contained in this article is not to be construed as legal advice. The content is drafted and published only for the purpose of providing the public with general information regarding various real estate and business law topics. For legal advice, please contact us.
About the Author:
Shahriar Jahanshahi is the founder and principal lawyer at Jahanshahi Law Firm with a practice focus on representing business star-ups and investors in the province of Ontario. For further information about Shahriar Jahanshahi, click here.
