The success of any business is when a consumer can identify your brand amongst hundreds of other brands in the market. The unique brand name that you create stays in the consumer’s mind, which in turn helps them identify our product quickly. Isn’t it essential that you protect such valuable marks that add significant value to your business?
In Canada, a person who uses a particular mark inside Canada continuously has more rights over it. However, registering a trademark is most preferred when your business throws an infringement curveball at you. Let us have a glance at the trademark registration procedure in Canada.
Filing an application
The Canadian Intellectual Property Office (CIPO), a member state of the Madrid Protocol, accepts applications through mail, fax, and online. Any individual, trade union, joint venture, partnership or corporation can file a trademark application.
Before filling in an application, you can always search the Canadian trademark database to identify any similar existing trademarks. An effective search involves searching the database with different search criteria and possible combinations. This, in turn, will prevent you from any potential infringements.
A complete trademark application must have the following details:
– The applicant’s name and mailing address.
– The application fees
– A description or representation of a trademark – A representation denotes multiple views of the mark within a size of 8cm x 8cm. Besides, marks that claim color as an essential feature should have representations in color along with a detailed description of the color. Animated and sound marks require an electronic representation along with a detailed description.
– A specific statement explaining the commercial terms of services and goods of the trademark.
– A statement grouping the services and goods according to the Nice classification.
– Any other detail about the trademark to be registered.
If we apply through fax or mail, we have to pay a fee of $430 for a single Nice class of services or goods. Meanwhile, if we file an online application, we have to pay a fee of $330 for the first Nice class of services and goods. Furthermore, you have to pay an additional fee of $100 for each additional class.
On receiving the application, CIPO will confirm if the application is complete. They will contact you in case of any missing information. Once your application is complete, the CIPO will assign an application number and notify the filing date. This date is crucial because it keeps track of the order of filing and will come in handy when there is confusion in already pending applications.
Examination by CIPO
Now, the examiner will conduct an extensive pre-publication search to ensure your mark doesn’t conflict with any of the registered trademarks. Moreover, he also ensures your mark complies with the Trademarks Act and Regulations. Once the trademark meets the requirements, the office will publish it in the Trademark journal that is released every Wednesday. The publication includes details such as filing date, the application number, name of applicant, trademark, and class of filing.
However, on examining, if the examiner raises any objection, the applicant should respond with adequate evidence. Generally, the duration for response is within six months from the date of the examiner’s report. If the examiner is still not satisfied, he may refuse to proceed further with the application. In such instances, the applicant may appeal to the Federal Court of Canada.
Meanwhile, if the applicant fails to respond to an objection within a stipulated time, the examiner will notify the applicant. If there is no response from the applicant, the application will be deemed abandoned.
Advertising in the Trademarks journal
Once your application is published in the trademark journal, any third party can oppose your trademark application within two months. However, one has to pay a fee of $750 to oppose an application. The Trademarks Opposition Board will notify you and provide you with a copy of the opposition statement. Now, you can file in suitable evidence and written arguments claiming your right over the mark.
If the Opposition Board refuses your application, you can appeal to the Federal Court of Canada.
Trademark registration
If there is no opposition or once you successfully overcome any opposition, your trademark will proceed for registration. You will receive your registration certificate within 20 days from the date of approval.
Renewal of trademarks
A registered trademark stands valid for ten years. One has to renew it to extend its validity. If you renew online, you will be paying $400 for the first class of services and goods and $125 for every additional class. Meanwhile, if you opt for renewal through post or fax, you must pay a renewal fee of $500 for the first class of services and goods and $125 for every additional class.
Trademarks continue to protect your brand day in and day out. A one-time application can save time and protect your brand integrity over the years. The trademark registration procedure in Canada is simple and of great use to businesses looking to establish their brand there.