The Trademark Search
Although not mandatory, we strongly recommend that the first step in the trademark application process be a trademark search in order to help you identify potential obstacles and determine whether your trademark is available for registration and use in Canada.
There are various types of searches that can be performed, such as a locate (or “knockout”) search; a comprehensive search of the Canadian trademark Register; or a full availability and registrability search, including common law searches of business name directories and registries, telephone listings, and domain name registries.
Preparing the Application
In order to prepare a Canadian trademark application, the following information is required:
- the trademark (if it is a design mark, a copy of the logo in e.tif format)
- the full name and address of the applicant
- a description in ordinary commercial terms of the wares and services that are or will be associated with the mark
- the date that the mark was first used in Canada in respect of each of the wares and services. If the mark has not yet been used in Canada, the application may be filed on the basis of “proposed use”
- an indication as to whether colour should be claimed as a feature of the mark
- an indication as to whether there are any previous owners of the mark.
It should be noted that “use” is narrowly defined under the Trademarks Act to mean that the mark has been displayed on the products or their packaging at the time of sale in Canada, or that the mark has been displayed in the performance or advertisement of services in Canada. Display of a mark on a website or in an advertisement does not constitute use of that mark in respect of products, although it may constitute use of a mark in respect of services provided the services are available in Canada.
Foreign applicants should also advise whether a priority claim is available and whether any additional bases for the Canadian application should be added, such as “foreign use and registration” in the applicant’s country of origin.
Canada does not use the International Classification system, therefore the Trademarks Office requires a fairly specific and detailed description of the wares and services associated with the trademark. Visit our “Links” section for a direct link to the Canadian Wares and Services Manual where you will find a search tool to assist you in determining whether your description of wares and/or services will be acceptable to the Trademarks Office.
Once filed, the application is reviewed by the Formalities Section of the Trademarks Office to ensure that it is complete. The application will be assigned a filing date and an application number, following which a Filing Notice will be issued. This stage may take anywhere from several days to two weeks.
Once the application has been “Formalized”, it will be assigned to an examiner at the Trademarks Office. The examiner will conduct a search of the Register to determine if there are any prior applications or registrations that are confusing with the applicant’s mark. The examiner will also determine if the mark is registrable in accordance with the provisions of the Trademarks Act. It normally takes between six to eight months for an application to be examined. If the examiner raises no objections, the application will be approved for advertisement in the Trademarks Journal. However, if the examiner has any objections, an Office Action will be issued. The applicant has the opportunity to respond to the Office Action and/or amend the application to conform to the examiner’s requirements. The applicant may request a single 6-month extension of time to prepare a response. If the applicant is unable to overcome the examiner’s objections, the application will be refused by the Trademarks Office. Conversely, if the applicant fails to respond within the required time frame, the Trademarks Office will deem the application to be abandoned.
Once the application has been “Approved” by the examiner, it will be advertised in the Trademarks Journal. Any member of the public may oppose the application within two months from the date of publication. If the application is not opposed, it will be allowed to proceed to registration.
Once the application has been “Allowed”, the final step is to pay the registration fee so that the mark may be entered on the Canadian Register. The Certificate of Registration will issue approximately one month from the payment of the registration fee.
If the application is based on “Proposed Use in Canada”, a Declaration of Use must also be filed stating that the trademark has actually been used by the applicant in Canada in respect of all of the wares and services claimed in the application. The Declaration of Use must be filed within six months from the date of “Allowance” or three years from the filing date, whichever is later. If the applicant requires additional time to commence use of the mark in Canada, the Trademarks Office will grant six-month extensions of time for an additional fee.
A Canadian trademark registration is valid for 15 years, and may be renewed indefinitely upon payment of a renewal fee.